Walmart Apollo, LLC

Patent Trials and Appeals Board

Jun 26, 2020

15413693 - (D) (P.T.A.B. Jun. 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.
15/413,693 01/24/2017 Tina M. Kurtz 8842-137029-US_903US02 8636
122573 7590 06/26/2020
Fitch, Even, Tabin & Flannery, LLP/Walmart Apollo
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
YANG, ELISA H
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/26/2020 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 PARTETINA M. KURTZ, KYLE F. GRAHAM,
DAVID M. NELMS and STEPHANIE GARMAN

Appeal 2020-001895
Application 15/413,693
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. 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(a). Appellant identifies the real parties in interest as Walmart,
Inc. and Walmart Apollo, LLC. Appeal Br. 3.
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STATEMENT OF THE CASE2
These teachings relate generally to retail shopping facilities and more
particularly to accommodating customers who visit the facility to pick up a
previously ordered item. See Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (italics added to contested prior-art limitations):
1. An apparatus comprising:
a retail shopping facility;
a network interface;
a central computer system for the retail shopping facility
and that is operably coupled to the network interface and
configured to:
automatically determine that a customer having a retail
item available for pickup at the retail shopping facility is
currently proximal to the retail shopping facility and
automatically responding to that determination by sending the
customer a message wherein the message includes an
opportunity for the customer to indicate that they will now pick
up the retail item at the retail shopping facility.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Agasti et al. (“Agasti”) US 2014/0379529 A1 Dec. 25, 2014

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Sep. 16, 2019); Reply Brief (“Reply Br.,” filed Jan. 13, 2020); Examiner’s
Answer (“Ans.,” mailed Nov. 14, 2019); Final Office Action (“Final Act.,”
mailed April 11, 2019); and the original Specification (“Spec.,” filed
Jan. 24, 2017).
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Rejections on Appeal3
R1. Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or abstract idea) without significantly more. Final
Act. 3.
R2. Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Agasti. Final Act. 9.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 3–14) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–20 on the basis of representative
claim 1; and we decide the appeal of anticipation Rejection R2 of claims
1–20 on the basis of representative claim 1. Dependent claims, not argued
separately, stand or fall with independent claims 1 and 11 from which they
depend.4

3 The Examiner withdrew the rejection of claims 6 and 16 under 35 U.S.C.
§ 112(b). Ans. 3.
4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments presented by Appellant with
respect to anticipation Rejection R2 of claims 1–20.
However, we disagree with Appellant’s arguments with respect to
subject matter eligibility Rejections R1 of claims 1–20 and, unless otherwise
noted, we incorporate by reference herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s
Answer in response to Appellant’s arguments. We highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–20
Issue 1
Appellant argues (Appeal Br. 10–11; Reply Br. 2–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error because of (i) the alleged failure to
consider the recited term “a retail shopping facility” under a Step 2A
analysis and (ii) the term “a retail shopping facility” is clearly integrated into
a practical application under Prong 2 of Step 2A. Appeal Br. 10.
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
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Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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);

5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof 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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
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Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). While a claim limitation to a process that “can be performed in the
human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.6
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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 Supreme 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

6 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int'l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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 (citation 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, 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.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf). “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 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human activity such as a fundamental economic
practice, or mental processes);7 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).8
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.9
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

7 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
8 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
9 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) 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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.10
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical

10 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,11
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-

11 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.12 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).13 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).14

12 See, e.g., Diehr, 450 U.S. at 187.
13 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.15
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-

15 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as an apparatus claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the limitations of claim 1 “recite the
concept of facilitating fulfillment of an order.” Final Act. 4. The Examiner
concludes the limitations:
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[F]all within the “Mental Processes” and “Certain Methods of
Organizing Human Activity” groupings of abstract ideas,
enumerated in the 2019 Revised Patent Subject Matter
Eligibility Guidance, in that they recite concepts performed in
the human mind (i.e. determining that a customer having a
retail item available for pickup at the retail shopping facility is
currently proximal to the retail shopping facility is an
observation/evaluation/judgment/opinion), fundamental
economic practices (i.e. facilitating fulfillment of an order), and
commercial transactions (i.e. responding to that determination
by sending the customer a message wherein the message
includes an opportunity for the customer to indicate that they
will now pick up the retail item at the retail shopping facility is
a sales activity/behavior).
Final Act. 4–5. See also Ans. 4.
Appellant argues (Appeal Br. 10–11; Reply Br. 2–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error because she failed to consider the recited
term “a retail shopping facility” under a Step 2A analysis. Appeal Br. 10.
However, the Examiner explains “A brick and mortar store is not a
machine.” Ans. 5.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention relates “generally to retail shopping facilities and more
particularly to accommodating customers who visit the facility to pick up a
previously ordered item.” Spec. 2.
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Appellant’s Abstract describes the invention as:
A central computer system for a retail shopping facility
automatically determines that a customer having a retail item
available for pickup at the facility is currently proximal to the
facility and automatically responds by sending the customer a
message that includes an opportunity for the customer to
indicate that they will now pick up the retail item. Upon
receiving information indicating that the customer utilized the
aforementioned opportunity to indicate that they will now pick
up the retail item, the central computer system can instigate a
transmission of a message to at least one associate of the retail
shopping facility to prompt the associate to move the retail item
from a first area of the retail shopping facility (such as a non-
public storage area) to a second area of the retail shopping
facility (such as a designated pick-up area).
Spec. 15 (Abstract).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:

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TABLE I
Independent Claim 1 Revised Guidance
An apparatus comprising: An apparatus (machine) is a statutory
subject matter class. See 35 U.S.C.
§ 101. 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.”).
[L1] a retail shopping facility; As a matter of claim construction,
we conclude the retail shopping
facility is not reasonably construed
as being a part of the claimed
apparatus but rather represents an
environment of use.
[L2] a network interface; A computer network interface is a
generic computer component
[L3] a central computer
system for the retail
shopping facility and that is
operably coupled to the
network interface and
configured to:
As claimed, a central computer
system coupled to a network
interface is an arrangement of
generic computer components. See
buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
[L4] automatically determine that
a customer having a retail item
available for pickup at the retail
shopping facility is currently
proximal to the retail shopping
facility and
“[D]etermin[ing] that a customer . . .
is currently proximal to the . . .
facility” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed
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Independent Claim 1 Revised Guidance
as a mental process. See Revised
Guidance 52.16
[L5a] automatically responding to
that determination by

[L5b] sending the customer a
message wherein the message
includes an opportunity for the
customer to indicate that they will
now pick up the retail item at the
retail shopping facility.
“[R]esponding” to the determination
(of customer proximity) is an
abstract idea, i.e., a certain method
of organizing human activity in the
form of a commercial interaction,
i.e., a sales activity. See Revised
Guidance 52.
Sending a message is insignificant
post-solution activity. 2019 Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
Appeal Br. 13 (Claims App.)(bracketed labeling added).
Under the broadest reasonable interpretation standard,17 and aside
from any claimed computer-related aspects, we conclude limitations [L4]

16 The “‘mere automation of manual processes using generic computers’ . . .
‘does not constitute a patentable improvement in computer technology,’”
Trading Techs. Int’l 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).
17 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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and [L5a] identified in TABLE I above, recite abstract functions that would
ordinarily be executed when facilitating fulfillment of an order. See Final
Act. 4.
We determine that claim 1, overall, recites certain methods of
organizing human activity in the form of commercial transactions, i.e., sales
activities, and alternatively, claim 1 recites fundamental economic principles
or practices. This type of activity, i.e., sending a message to customers to
pick up their retail item, for example, is emblematic of a commercial
transaction, a sales activity and an economic practice. 18
Thus, under Step 2A(i), while we generally agree with the Examiner
that claim 1 recites an abstract idea, we differ in some respects as to the
specific categorization of the various abstract ideas recited in claim 1, and to
the specific characterization of claim 1, as a whole. We conclude claim 1,
under our Revised Guidance, recites a judicial exception of a certain method
of organizing human activity in the form of commercial interactions, i.e.,
sales activities (“facilitating fulfillment of an order”) and, alternatively, we

18 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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conclude claim 1 recites a fundamental economic practice. In either case,
we conclude claim 1 recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we conclude limitation [L1], “a retail
shopping facility,” does not recite extra-solution activity, an abstract idea, or
well-understood, routine and conventional components, but instead merely
recites an environment of use of the other recited generic computer
components. We note the structure of a generic computer component does
not change when moved to a particular location (environment). We further
conclude limitation [L5b] recites insignificant post solution activity. The
Supreme Court guides that the “prohibition against patenting abstract ideas
‘cannot be circumvented by’ . . . adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
On this record, we are of the view that Appellant’s claims do not operate the
recited generic computer components (i.e., limitations L2 and L3) in an
unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
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We are not persuaded by Appellant’s somewhat unclear argument that
the “apparatus” comprises “a retail shopping facility,” and thus integrates the
recited abstract ideas into a practical application. Appeal Br. 10. We find
each of the other limitations of claim 1 either recite abstract ideas, extra-
solution activity, or generic computer components as identified in Step 2A(i),
supra (see TABLE I, L2 and L3), and none of the limitations integrate the
judicial exception of facilitating fulfillment of an order into a practical
application as determined under one or more of the MPEP sections cited
above. The claim as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea in the environment of a retail shopping
center.
Thus, on this record, Appellant has not shown an improvement or
practical application under the guidance of MPEP section 2106.05(a)
(“Improvements to the Functioning of a Computer or to Any Other
Technology or Technical Field”) or section 2106.05(e)(“Other Meaningful
Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
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an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea19; mere instructions to implement an
abstract idea on a computer20; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.21

19 Alice, 573 U.S. at 221–23.
20 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
21 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
facilitating fulfillment of an order, i.e., determining that a customer having a
retail item available for pick up is proximate to the retail shopping facility,
and sending a related message to the customer, into a patent-eligible
application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As required under Berkheimer, the Examiner provides a particular
type of evidence of the well-understood, routine, and conventional nature of
the recited computer function22 by concluding,
claim 1 merely recites the additional elements in order to
further define the field of use of the abstract idea, therein
attempting to generally link the use of the abstract idea to a
particular technological environment, such as the Internet or
computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed.
Cir. 2014); Bilski v. Kappas (2010); MPEP 2106.05(h)).
Ans. 6–9.
Similar to FairWarning v. Iatric Sys., claim 1, executed in a computer
environment at a retail shopping facility, “merely indicates a field of use in

22 See Berkheimer Memo 4 (“A citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s)”).
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which to apply the abstract idea because this requirement merely limits the
claim to the computer field, i.e., to execution on a generic computer.” Id.
As further evidence of the conventional nature of the recited “network
interface” and “central computer system” in claim 1; and similarly for
method claim 11, the Specification discloses: “Network interfaces,
including both wireless and non-wireless platforms, are well understood in
the art and require no particular elaboration here.” Spec. ¶ 22. The recited
“central computer system” is described in general terms also. See Spec.
¶¶ 18–22.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as quoted above.23
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a the recited “network interface” and “central computer
system,” neither of which is argued by Appellant, and similarly for method
claim 11, is simply not enough to transform the patent-ineligible abstract
idea here into a patent-eligible invention under Step 2B. See Alice, 573 U.S.
at 221 (“[C]laims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.”).

23 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–20, 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.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 2–20, which fall therewith. See Claim
Grouping, supra.
2. § 102(a)(1) Rejection R2 of Claims 1–20
For essentially the same reasons argued by Appellant (see generally
Appeal Br. 11–12) we reverse the Examiner’s rejection of independent
claim 1, and also the rejection of independent claim 11, which recites the
dispositive limitation in commensurate form. For the same reasons, we also
reverse the rejections of all claims 2–10 and 12–20 that depend therefrom.24

24 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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Issue 2
Appellant argues (Appeal Br. 11–12) the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a)(1) as anticipated over Agasti is in error.
These contentions present us with the following issue:
Did the Examiner err in finding Agasti discloses a method that uses “a
central computer system . . . configured to: automatically determine that a
customer having a retail item available for pickup at the retail shopping
facility is currently proximal to the retail shopping facility and automatically
responding . . . by sending the customer a message,” as recited in claim 1?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Analysis
Independent Claim 1
Appellant argues:
While claim 1 specifies using a central computer system for a
retail shopping facility, Agasti teaches using a user device, such
as a smartphone, to itself determine whether the user is within
range of a pickup area and, when such is true, to present the
user via that user device with a question to determine whether
the user would like to now receive previously-purchased items
at a curbside pickup area. At paragraph 0042, Agasti in fact
dedicates considerable verbiage and effort to drive home the
point that it is the user’s mobile computing device that handles
this activity and not some other platform. It is axiomatic that a
reference must clearly describe each and every limitation of a
claim in order to qualify as an anticipating reference. With all
due respect, such is not the case with Agasti. While the
applicant’s central computer system for a retail sales facility
may interact with a user’s mobile device, claim 1 nevertheless
clearly specifies that it is the central computer system that
carries out the foregoing determination and response. For the
very simple reason that a central computer system for a retail
sales facility is not a customer’s smartphone (or similar device),
the applicant respectfully submits that the Examiner clearly errs
when applying Agasti as an anticipatory reference.
Appeal Br. 11–12.
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The Examiner finds Agasti ¶¶ 21, 45, 46 discloses the disputed
limitation “a central computer system for the retail shopping facility.” Final
Act. 10.
The Examiner additionally finds “[t]he order fulfillment system of
Agasti sends the message via the curbside pickup app to the mobile device.”
Ans. 6.
We determine error in the Examiner's finding that Agasti’s disclosure
of a central computer system for a retail shopping facility fully discloses the
disputed limitation, and thus we find the rejection does not meet the rigorous
requirements of anticipation. In anticipation, “the Board must compare the
construed claim to a prior art reference and make factual findings that ‘each
and every limitation is found either expressly or inherently in [that] single
prior art reference.”’ In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Our reviewing court guides, under § 102, the prior art reference “must
not only disclose all elements of the claim within the four corners of the
document, but must also disclose those elements arranged as in the claim.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citation and internal quotation marks omitted). “Thus, it is not enough that
the prior art reference discloses part of the claimed invention, which an
ordinary artisan might supplement to make the whole, or that it includes
multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention.” Id. at 1371 (emphasis added).
Therefore, we find the Examiner’s cited sections of Agasti does not
expressly or inherently disclose an arrangement in which the a central
computer system for the retail shopping facility is operably coupled to a
network interface, and which is configured to automatically determine that a
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customer having a retail item available for pickup is close to the retail
shopping facility and, in response thereto, sending the customer a message.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art to disclose the dispositive limitation of claim 1, such that we find error in
the Examiner's resulting finding of anticipation.
Accordingly, we do not sustain the Examiner's anticipation rejection
of independent claim 1, nor do we sustain the anticipation rejection of
independent claim 11 which recites the dispositive limitation in
commensurate form. For the same reasons, we also do not sustain the
Examiner's anticipation Rejection R2 of dependent claims 2–10 and 12–20,
which variously depend from independent claims 1 and 11.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to the patent ineligibility
Rejection R1 of claims 1–20 under 35 U.S.C. § 101, and we sustain the
rejection.
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(2) The Examiner erred with respect to anticipation Rejection R2 of
claims 1–20 under 35 U.S.C. § 102(a)(1) over the cited prior art, and we do
not sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–20 101 Subject Matter Eligibility 1–20
1–20 102(a)(1) Anticipation Agasti 1–20

Overall
Outcome 1–20
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