W.W. Grainger, Inc.

Patent Trials and Appeals Board

Oct 6, 2020

15214946 - (D) (P.T.A.B. Oct. 6, 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.
15/214,946 07/20/2016 Geoffry A. Westphal 31083.36US2 8558
34018 7590 10/06/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
10/06/2020 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GEOFFRY A. WESTPHAL
__________

Appeal 2020-000636
Application 15/214,946
Technology Center 3600
__________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
ULRIKE W. JENKS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies W.W. Grainger, Inc., as the real party in
interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification discloses “a system and method . . . for using
purchasing history data to automatically create a personalized product list,
particularly a personalized product list for products or services that are to be
fulfilled according to a recurrence pattern.” Spec. 3.
“For example, the system may create a listing of some or all products
that the system has discerned are purchased in a recurring pattern on or
around a common date, dates, day, days, month, months, etc.” Spec. 8. The
system may also add to a created listing of products “additional product[s]
(which may be limited to those of the same category, e.g., cleaning supplies,
or as otherwise filtered) that might have been discerned by the system as
having a similar recurring purchasing pattern but which product is often
purchased on or around different dates, days, months, etc.” Id.
The Specification explains that, when the system includes an
additional product in a personalized product listing based on a similar
purchasing pattern, “the [system] user . . . might be able to order the
[additional] product with other products having a similar recurring
purchasing pattern and thereby might be eligible for cost saving associated
with shipping, discounts, etc.” Spec. 8–9. “In addition, the system . . . may
pre-select one or more proposed purchasing dates - in keeping with the
recurrence pattern - for the products within the listing which dates may also
be user editable as desired.” Id. at 10.
Appellant’s claim 1, the only independent claim on appeal, is
representative. Appellant’s claim 1 reads as follows, with the claim steps
annotated with bracketed numbering:
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1. A non-transitory, computer-readable medium having
stored thereon computer executable instructions for generating
by a product vendor server a personalized product listing for a
user, the instructions performing steps, when executed by a
processing device, comprising:
[1] gathering from an electronic data repository
associated with the product vendor server prior product
purchasing history of the user;
[2] analyzing the gathered prior product purchasing
history of the user to discern if one or more products have been
repeatedly purchased in the past by the user on a first recurring
calendar day according to a recurrence pattern and to discern if
one or more products have been repeatedly purchased in the
past by the user on a second recurring calendar day according to
the recurrence pattern wherein the second recurring calendar
day is different than the first recurring calendar day;
[3] automatically generating a webpage form for display
on a client computer, wherein the webpage form is
prepopulated with the one or more products from the product
vendor that have been repeatedly purchased on the first
recurring calendar day according to the recurrence pattern, the
one or more products from the product vendor that have been
repeatedly purchased on the second recurring calendar day
according to the recurrence pattern, and a recurring reorder
calendar day for the one or more products from the product
vendor that have been repeatedly purchased on the first
recurring calendar day according to the recurrence pattern and
the one or more products from the product vendor that have
been repeatedly purchased on the second recurring calendar day
according to the recurrence pattern that is set to the second
recurring calendar day; and
[4] causing the webpage form to be sent to the client
computer via use of a logical connection between the product
vendor server and the client computer, the webpage form
further having one or more graphical user interface input
elements for allowing the user to edit the one or more products
that are included within the webpage form and/or the recurring
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reorder calendar day when the webpage form is caused to be
displayed by the client computer prior to a submission of the
webpage form to the product vendor server, whereupon the
product vendor server facilitates order fulfillment of the one or
more products according to the recurring reorder day upon
receiving the webpage form from the client computer.
Appeal Br. 10–11.
The following rejections are before us for review:
(1) Claims 1–11 and 13, under 35 U.S.C. § 101, as being directed to
subject matter not eligible for patenting (Ans. 3–5); and
(2) Claims 1–11 and 13, under 35 U.S.C. § 103(a) as being
unpatentable over Kerker,2 Gupta,3 Glynias,4 Dolezal,5 and official notice
(Ans. 5–14).
ELIGIBILITY FOR PATENTING
The Examiner’s Position
The Examiner determined that a number of the steps executed
according to the instructions on the claimed computer-readable medium
invention recite “an abstract idea in the field of commercial interactions.”
Ans. 3; see also id. at 4 (“The claims recite performing steps of a
commercial interaction.”).
The Examiner determined that the claims do not integrate the abstract
idea into a practical application because “us[ing] a computer as a tool to
perform an abstract idea, is not indicative of integration into a practical
application, nor is linking the use of the judicial exception to a particular

2 US 2011/0258072 A1 (published Oct. 20, 2011).
3 US 8,583,512 B1 (issued Nov. 12, 2013).
4 US 2011/0078028 A1 (published Mar. 31, 2011).
5 US 2006/0265418 A1 (published Nov. 23, 2006).
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technological environment or field of use (Mayo test, Step 2A, Prong 2).”
Ans. 4. In particular, the Examiner reasoned:
Adding insignificant extra-solution activity to the judicial
exception (e.g., causing a webpage form to be sent to a client
computer) is also not indicative of integration into a practical
application. The claims do not recite improvements to the
functioning of a computer or to any other technology or
technical field. The claims do not recite applying or using a
judicial exception to effect a particular treatment or prophylaxis
for a disease or medical condition. The claims do not recite
applying the judicial exception with, or by the use of, a
particular machine. The claims do not recite effecting a
transformation or reduction of a particular article to a different
state or thing. The claims do not recite applying or using a
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 (Mayo test, Step 2A, Prong 2).
Ans. 4.
The Examiner further determined that there are “no additional
elements recited in the claims to raise them to significantly more than the
judicial exception. In particular, the claims do not add a specific limitation
other than what is well-understood, routine, and conventional activity in the
field (Mayo test, Step 2B).” Ans. 5. The Examiner reasoned further:
The specific steps of the claims, such as gathering prior product
purchasing history of a user, analyzing the gathered prior
product purchasing history, generating a webpage form, and
causing the webpage form to be sent to a client computer, etc.,
do not qualify, alone or in combination, to raise the claimed
method to significantly more than an abstract idea.
Id.
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Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (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.”).
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 v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
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Early in 2019, the PTO published revised guidance on the application
of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“2019 Office Guidance” or “Office
Guidance”). In light of comments received in response to the Office
Guidance, the PTO subsequently issued the October 2019 Update: Subject
Matter Eligibility (“October 2019 Update”).6 “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.
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B of the Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are 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 Office Guidance (84 Fed. Reg. at 56).

6 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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Analysis
Claim 1 recites a “non-transitory, computer-readable medium having
stored thereon computer executable instructions.” Appeal Br. 10. We find,
therefore, that the subject matter recited in claim 1 is an article of
manufacture, which falls within one of the broad statutory categories of
patent-eligible subject matter under 35 U.S.C. § 101. Accordingly, we
proceed to Step 2A, Prong One, of the Office Guidance to determine the
claim’s subject matter eligibility in accordance with guidance under
Mayo/Alice.
Office Guidance—Revised Step 2A, Prong 1
Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance, we
agree with the Examiner that Appellant’s claim 1 recites judicial exceptions,
in the form of mental processes and methods of organizing human activity,
which are abstract ideas. See Office Guidance (84 Fed. Reg. at 52 (abstract
ideas include “(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion”); id.
(abstract ideas include “(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”) (citations omitted)).
The first two steps of Appellant’s claim 1 recite [1] gathering a user’s
product purchasing history data from a product vendor, and [2] analyzing
that data to determine whether the user, i.e., customer, has repeatedly
purchased one or more products according to a recurring pattern on different
first and second recurring calendar days. See Appeal Br. 10. While claim 1
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requires the analyzing step to be performed by a processing device, a human
mind is also able to analyze data to determine whether a user has repeatedly
purchased one or more products according to a recurring pattern.
Accordingly, the analyzing step recited in claim 1 is a mental process, which
constitutes an abstract idea. See Office Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Step [3] of Appellant’s claim 1 recites generating a webpage form that
is prepopulated with (a) one or more products that the user has repeatedly
purchased according to a recurring pattern on different first and second
calendar days, and (b) a recurring reorder calendar day for ordering the
products, wherein the recurring reorder calendar day is set to the second
recurring calendar day. See Appeal Br. 10–11. Step [4] of Appellant’s
claim 1 recites sending the prepopulated webpage form to the user, and
specifies that the webpage has graphical user interface input elements that
allow the user, i.e., the customer, to edit the products that are included in the
webpage form, and also to edit the recurring calendar day on which the form
is displayed on the user’s computer, before the user submits the form to the
product vendor. See id. at 11.
Because steps [3] and [4] of claim 1 involve generating a product
order form, and sending the form to a customer, we agree with the Examiner
that claim 1 recites marketing and sales activities, which are methods of
organizing human activity, ultimately constituting abstract ideas. See Office
Guidance (84 Fed. Reg. at 52 (abstract ideas include “(b) [c]ertain methods
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of organizing human activity— . . . commercial or legal interactions
(including . . . marketing or sales activities or behaviors”))).
Office Guidance—Revised Step 2A, Prong 2
Having determined under Revised Step 2A, Prong 1, of the Office
Guidance that Appellant’s claim 1 recites judicial exceptions, we turn to
Revised Step 2A, Prong 2, of the Office Guidance to determine whether
claim 1 recites additional elements that integrate the judicial exceptions into
a practical application. See Office Guidance (84 Fed. Reg. at 54–55). We
find that Appellant’s claim 1 does not recite additional elements sufficient to
integrate the judicial exceptions into a practical application.
As noted above, step [2] of Appellant’s claim 1 recites the abstract
mental process of analyzing data, and steps [3] and [4] recite the abstract
sales activity of generating a product order form and sending the form to a
customer. The remaining step [1] of Appellant’s claim 1 recites gathering
sales data, which is insufficient to integrate the abstract ideas into a practical
application. See Office Guidance (84 Fed. Reg. at 55 n.31 (additional
element that merely adds insignificant extra-solution activity to a judicial
exception includes “mere data gathering such as a step of obtaining
information about credit card transactions so that the information can be
analyzed in order to detect whether the transactions were fraudulent”)).
We are not persuaded by Appellant’s argument that the Examiner
oversimplified the elements of the graphical user interface, or that the
elements of the graphical user interface are sufficient to integrate the recited
abstract ideas into a practical application. See Appeal Br. 5–6 (citing
Trading Techs. Int’l, Inc. v. CQG, Inc., 675 Fed. App’x 1001 (Fed. Cir.
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2017) (nonprecedential)); see also Reply Br. 2–3 (citing McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)).
Rather than requiring a specific configuration, the graphical user
interface input elements of step [4] of claim 1 are recited entirely in terms of
their functionality: “allowing the user to edit the one or more products that
are included within the webpage form and/or the recurring reorder calendar
day when the webpage form is caused to be displayed by the client computer
prior to a submission of the webpage form to the product vendor server.”
Appeal Br. 11 (claim 1). The step does not recite how the graphical
interface input elements are implemented to enable the user to edit the page.
Thus, rather than requiring specific structures or reciting limited rules
that improve computer function or some other technological field, the input
elements recited in Appellant’s claim 1 are merely generic computer input
elements that allow a customer to select the products it wishes to buy, and
the desired time for that purchase. Such generic computer elements are
insufficient to integrate the abstract sales activity into a practical application.
See Office Guidance (84 Fed. Reg. at 55 (example in which a judicial
exception is not integrated into a practical application includes situation in
which a claim “merely includes instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an abstract
idea”)).
Even assuming, for the sake of argument, that the process of
Appellant’s claim 1 reflects an improvement in sales strategies, an
improvement in an abstract idea is insufficient to establish eligibility for
patenting. See In re BRCA1- and BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 759 (Fed. Cir. 2014) (Even if Appellants “made
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a ‘[g]roundbreaking, innovative, or even brilliant discovery,’ . . . that is not
enough” to establish patent eligibility.) (citing Ass’n for Molecular
Pathology v. Myriad, 569 U.S. 576, 591 (2013)).
Appellant’s claim 1, moreover, does not recite any steps directed to
delivering goods. Appellant does not persuade us, therefore, that the
claimed invention “provide[s] benefits not only to the user but also to a
vendor, a transport company, and the environment.” Appeal Br. 5; Reply
Br. 3.
Office Guidance—Step 2B
For the reasons discussed above, we are persuaded that Appellant’s
representative claim 1 recites judicial exceptions (abstract ideas in the form
of mental processes and methods of organizing human behavior) under
Revised Step 2A, Prong 1, of the 2019 Office Guidance, and does not
integrate those judicial exceptions into a practical application under Revised
Step 2A, Prong 2. Accordingly, we turn to Step 2B of the Office Guidance
to determine whether (a) claim 1 recites specific limitations beyond the
judicial exceptions that are not well-understood, routine, or conventional in
the field, or (b) whether claim 1 simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Office Guidance (84 Fed.
Reg. at 56).
In the present case, as discussed above, steps [2]–[4] of Appellant’s
representative claim 1 recite performing activities that involve abstract ideas
in the form of a mental process and sales activity. The only other step
beyond the judicial exceptions recited in representative claim 1, step [1],
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recites gathering a user’s (i.e., a customer’s) product purchasing history data
from a product vendor.
As the Examiner found, each of Kerker, Gupta, and Glynias discloses
that it was known in the art of sales activity to gather data about a
customer’s product purchasing history. See Kerker ¶ 76 (disclosing that “the
vendor . . . accesses the transaction history interface . . . to determine
recurring patterns within that particular vendor’s . . . consumer . . . base”);
Gupta Abstract (“Item-level electronic transaction data is analyzed to
determine purchase intervals of items and estimate when the consumer will
purchase the items again.”); Glynias Abstract (disclosing an “interactive
online website . . . [which] provides a prepopulated order sheet displaying at
least some sales history of products or services previously purchased by a
website user”).
Given multiple disclosures in the cited prior art showing that
gathering a customer’s purchasing history was a known practice in sales
activities, the evidence of record supports the Examiner’s finding that
gathering a customer’s purchasing history was in widespread use in the sales
art, and therefore was a well-understood, routine, conventional activity.
Accordingly, we agree with the Examiner that the overall process recited in
representative claim 1, viewed as an ordered combination and as a whole,
simply appends well-understood, routine, conventional activities previously
known to the industry (gathering purchasing history), specified at a high
level of generality, to the judicial exceptions recited in the claim (analyzing
the purchasing history, generating a webpage product order form based on
the analysis, and sending the order form to the customer).
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Viewing the steps of representative claim 1’s process individually, we
come to the same conclusion. As noted above, claim 1’s step [1] involves
the well-understood, routine, conventional activity of gathering a customer’s
purchasing history in electronic data form. See Kerker ¶ 76; Gupta Abstract;
Glynias Abstract. As discussed above, step [2] of claim 1 involves the
entirely mental process of analyzing the collected data, and therefore does
not provide any elements beyond the abstract idea itself.
As also discussed above, steps [3] and [4] of claim 1 recite elements
involved in abstract sales activity and therefore do not recite elements
beyond the recited abstract ideas. In addition, the Examiner identified
evidence, expressly noted (and undisputed) by Appellant (see Reply Br. 2
(citing Ans. 18)), to support a finding that automatically generating
webpages for display (step [3]), and sending the webpage to a client
computer (step [4]) were well-known, routine, and conventional. See Ans.
18 (citing Jallad7 and Bullock8). In determining that the elements of steps
[3] and [4] recite conventional elements, the Examiner also cited to the
rejection under § 103 discussed below (see Final Act. 4), in which the
Examiner took official notice, undisputed by Appellant, that that graphical
user interfaces with input elements were well known. See Final Act. 8. We
note, in addition, that Glynias, cited in the obviousness rejection below,
teaches that it was known in the art to prepare prepopulated product order
forms for customers, the order forms including graphical user interface input
elements allowing the user to edit the products included in webpage form, as

7 US 2011/0119484 A1 (published May 19, 2011).
8 US 7,475,346 B1 (issued Jan. 6, 2009).
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well as the recurring reorder calendar day, thus supporting the Examiner’s
undisputed assertion of official notice in that regard. See Glynias Fig. 1.
Given all of the above, we find that the evidence of record supports the
Examiner’s finding that the elements of steps [3] and [4] of claim 1 were
well-known, routine, and conventional activities previously known to the
industry, specified at a high level of generality, even considering the fact
that those elements are directly involved in the abstract sales activity recited
in the claim.
Appellant’s arguments as to this issue do not persuade us of reversible
Examiner error. Appellant argues:
[B]ecause the Office has failed to point to any particular section
of any prior art reference to demonstrate or otherwise evidence
that the other claimed elements, i.e., those claimed elements
that may have been “mentioned” in the final rejection as well as
those that have been ignored, are, when considered in the
entirety as required, well-known, routine, and/or conventional,
the rejection of the claim under 35 U.S.C. § 101 must be
withdrawn. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018).
Reply Br. 2.
We note initially that Appellant’s argument relating to the Berkheimer
case is presented for the first time in the Reply Brief. As explained in 37
C.F.R. § 41.37(c)(1)(iv), except in certain circumstances not applicable here,
“any arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”
We are not persuaded, therefore, that the new argument relating to
Berkheimer is properly presented for the first time in the Reply Brief, such
that we should consider it. See also 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
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responsive to an argument raised in the examiner’s answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (The reply brief is not “an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”)
(“Informative”).
In its argument relating to Berkheimer, moreover, Appellant fails to
explain specifically which particular claim elements, beyond the abstract
ideas recited in claim 1, the Examiner failed to establish as being well-
known, routine, and conventional activities. See Reply Br. 2. Absent some
specific explanation as to how the Examiner reversibly erred, and the claim
elements involved, we are not persuaded that Appellant’s general assertion
of error is sufficient to establish any particular deficiency in the Examiner’s
analysis. To the contrary, for the reasons discussed above, we agree with the
Examiner that the evidence of record establishes that, whether considered as
an ordered combination or as individual elements, representative claim 1
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exceptions recited in the claim.
Eligibility for Patenting—Conclusion
As discussed above, we are persuaded that Appellant’s claim 1 recites
judicial exceptions under Revised Step 2A, Prong 1, of the 2019 Office
Guidance, and does not integrate those judicial exceptions into a practical
application under Revised Step 2A, Prong 2. As also discussed above, we
are persuaded that claim 1 simply appends well-understood, routine,
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conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Accordingly, applying the relevant legal principles enunciated by the
Supreme Court and Federal Circuit as set forth in the 2019 Office Guidance
and October 2019 Update, we find that the preponderance of the evidence
supports the Examiner’s determination that Appellant’s claim 1 is directed to
subject matter that is ineligible for patenting. We, therefore, affirm the
Examiner’s rejection of claim 1 on that ground. Because they were not
argued separately, claims 2–11 and 13 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
OBVIOUSNESS
The Examiner’s Position
In rejecting claims 1–11 and 13 for obviousness, the Examiner cited
Kerker as describing a process for generating a personalized product listing
for a user, and cited Gupta as evidence that it would have been obvious to
create a non-transitory computer readable medium with instructions to
perform Kerker’s process. Ans. 6.
The Examiner also cited Gupta as evidence that it would have been
obvious to modify Kerker’s process to discern if the user had repeatedly
purchased one or more products on first and second recurring calendar days,
in a recurrence pattern in which the second recurring calendar day is
different than the first recurring calendar day. See Ans. 7.
The Examiner cited Kerker as disclosing preparation of a webpage
order form, and sending that form to a client computer. Ans. 7–8. The
Examiner cited Gupta as evidence that it would have been obvious for the
webpage form
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to have a recurring reorder calendar day for the one or more
products from the product vendor that have been purchased on
the first and second recurring calendar days according to the
recurrence pattern, for the obvious advantage of arranging for
the user to reorder at appropriate times, and avoid running out
of recurrently purchased products.
Id. at 8.
The Examiner cited Glynias as evidence that it would have been
obvious for Kerker’s webpage form to be prepopulated with the one or more
products from the product vendor that have been repeatedly purchased
according to the recurrence pattern, “for the obvious advantage of aiding the
user in conveniently reordering those products.” Ans. 9.
The Examiner cited Dolezal as evidence that it would have been
obvious to automatically generate Kerker’s webpage form, and took official
notice of the fact that graphical user interfaces with input elements were well
known, and also took official notice that it was well known for orders to be
placed by a webpage form that was filled out and sent or submitted to a
server. Ans. 9.
Analysis
Appellant argues, among other things, that the Examiner did not
explain sufficiently why the cited references suggest generating a webpage
that is prepopulated with products repeatedly purchased on first and second
recurring calendar days, wherein the form also includes a “recurrence pattern
that is set to the second recurring calendar day as claimed” in representative
claim 1. Appeal Br. 8.
Specifically, Appellant argues, the Examiner’s conclusion that it
would have been obvious to set the recurrence pattern to the second calendar
day is based on improper hindsight “because Gupta expressly describes a
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system that is intended to generate multiple shopping lists that are
segregated according to their pre-determined or selected shopping date (See,
e.g., Figs. 1 and 3, Col. 7, line 62-Col. 8, line 15).” Appeal Br. 8.
The Examiner responds:
Even supposing, which Examiner does not concede, that
Gupta does not precisely teach the exact claim language which
is admittedly not disclosed by Kerker, the teachings of Gupta at
least make the modification of Kerker to meet the claim
limitations a product of ordinary skill and common sense, not
patentable innovation.
Ans. 22.
Moreover, the Examiner argues:
[T]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413 . . . (CCPA 1981).
Ans. 23.
Having carefully considered all of the evidence and arguments
advanced by Appellant and the Examiner, we agree with Appellant that the
Examiner has not explained sufficiently why the cited references would have
suggested generating the prepopulated webpage form required by
Appellant’s claim 1. In particular, Appellant’s claim 1 recites generating a
webpage form prepopulated with (a) the one or more products purchased
according to a recurrence pattern on different first and second calendar days,
and (b) “recurring reorder calendar day for the one or more products . . . that
is set to the second recurring calendar day.” Appeal Br. 10–11 (emphasis
added).
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We acknowledge, as the Examiner points out, that Gupta discloses
analyzing data regarding recurring purchases made on different recurring
calendar days. See Gupta 12:39–44 (“In the illustrated example [shown in
Fig. 6A], purchase intervals 251b,c of Cereal 2 (RAISIN BRAN) and
Diapers (PAMPERS) are the same even though RAISIN BRAN and
PAMPERS s were purchased at different times due to considering the
average number of items 212s purchased over the same time.”); see also id.
at Fig. 6A (showing different recurring purchase dates for RAISIN BRAN,
PAMPERS, and BRAWNY).
As Appellant points out, however, the shopping lists generated
according to Gupta are set to the next estimated calendar day on which the
items are needed to be purchased, segregated either by day, or by merchant.
See Gupta Figs. 7–11; see also id. at 8:8–13 (disclosing “determin[ing]
which items 212 were estimated by purchase interval program 254a to be
needed or purchased again within a predetermined time or by a certain date”
and in response to that determination “generat[ing] multiple shopping lists
253m segregated according to pre-determined criteria”).
Thus, on the current record, Gupta teaches that shopping lists should
be set to the next estimated day on which items are expected to be needed.
We are not persuaded, therefore, that the Examiner has explained
sufficiently why Gupta (even when combined with the other cited
references), would have suggested generating a prepopulated product order
form for a customer, the form including a list of multiple products, where the
form is prepopulated with a recurring reorder calendar day that is set to the
second recurring calendar day on which products are repeatedly purchased,
as recited in Appellant’s claim 1.
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We acknowledge, as the Examiner contends, that evaluation of
obviousness requires consideration of common sense. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“Rigid preventative rules that deny
factfinders recourse to common sense . . . are neither necessary under our
case law nor consistent with it.”).
As our reviewing court has pointed out, however, ordinary creativity
and/or common sense “cannot be used as a wholesale substitute for reasoned
analysis and evidentiary support, especially when dealing with a limitation
missing from the prior art references specified.” DSS Tech. Mgmt., Inc. v.
Apple Inc., 885 F.3d 1367, 1374 (Fed. Cir. 2018) see also id. at 1374–75
(“In cases in which common sense is used to supply a missing limitation, as
distinct from a motivation to combine, . . . our search for a reasoned basis
for resort to common sense must be searching.”) (internal quotations
omitted; emphasis added).
In the present case, the Examiner did not explain specifically why
ordinary creativity and/or common sense would have led a skilled artisan to
generate a prepopulated product order form for a customer, the form
including a list of multiple products, where the form is prepopulated with a
recurring reorder calendar day that is set to the second recurring calendar
day on which products are repeatedly purchased, as recited in Appellant’s
claim 1. Nor are we persuaded that the Examiner explained sufficiently why
any teaching in any of the cited references, or knowledge generally available
to skilled artisans, would have suggested generating a prepopulated product
order form for a customer, where the form is prepopulated with a recurring
reorder calendar day that is set to the second recurring calendar day, as
recited in Appellant’s claim 1. Accordingly, because we are not persuaded
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that the Examiner has explained sufficiently why a skilled artisan would
have prepared a computer-readable medium having all of the features recited
in Appellant’s claim 1, we reverse the Examiner’s obviousness rejection of
claim 1, and its dependent claims.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11, 13 101 Eligibility 1–11, 13
1–11, 13 103(a) Kerker, Gupta,
Glynias, Dolezal,
Official Notice
1–11, 13
Overall
Outcome
1–11, 13

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