Yext, Inc.

Patent Trials and Appeals Board

Feb 10, 2020

14793327 - (D) (P.T.A.B. Feb. 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.
14/793,327 07/07/2015 Howard C. Lerman 21366-126 8725
28221 7590 02/10/2020
PATENT DOCKET ADMINISTRATOR
LOWENSTEIN SANDLER LLP
ONE LOWENSTEIN DRIVE
ROSELAND, NJ 07068
EXAMINER
SINGH, AMRESH
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
02/10/2020 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD C. LERMAN, THOMAS C. DIXON, KEVIN
CAFFREY, and DAVID C. LIN1
____________________

Appeal 2018-006402
Application 14/793,327
Technology Center 2100
____________________

Before ROBERT E. NAPPI, LARRY J. HUME and
STEPHEN E. BELISLE, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3 through 14, 16 through 20, 22 through 24, and 26.
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). According to Appellant, Yext Inc. is the real party in interest.
Appeal Br. 3.
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INVENTION
The invention relates generally to Internet search methods, and more
particularly, to a method and system for selecting a single accurate listing
and suppressing other duplicate listings on one or more listing provider
systems from a single source system triggered by a user. Spec. ¶ 1. Claim 1
is reproduced below.
1. A method comprising:
receiving, by a processing device of a source system, a
first indication to suppress one or more listings associated with
an entity on one or more provider systems, wherein the first
indication comprises first identification data of the entity and an
indication that the first identification data of the entity is no
longer valid;
retrieving, from a database associated with the processing
device, a list of one or more provider systems associated with
the processing device and having at least one listing
corresponding to the entity; and
for each provider system in the list of one or more
provider systems:
searching the provider system, by the processing
device, for listings having identification data matching
the identification data of the entity;
receiving, by the processing device from the
provider system, one or more matching listings having
second identification data matching the first
identification data of the entity, wherein each listing of
one or more matching listings has a corresponding
provider-supplied external identifier;
transmitting, by the processing device to the
provider system, a request to suppress the one or more
matching listings from search results on at least one of
the provider systems, the request to suppress the one or
more matching listings comprising a list of the one or
more corresponding provider-supplied external
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identifiers to indicate the one or more matching listings
to suppress, each matching listing of the one or more
matching listings comprises a corresponding confidence
score from the source system indicating that the matching
listing is a designated duplicate listing, wherein at least
one of the one or more matching listings having a lowest
confidence score is to be suppressed; and
receiving, by the processing device, an
acknowledgement to accept the request to suppress the
one or more matching listings from the provider system,
wherein the acknowledgement comprises a confirmation
of at least one of the one or more remaining listings that
is suppressed as a duplicate listing.
EXAMINER’S REJECTION2
The Examiner rejected claims 1, 3 through 14, 16 through 20,
22 through 24, and 26 under 35 U.S.C. § 101 for being directed to patent-
ineligible subject matter. Final Act. 5–6.
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 101. Patent
eligibility under § 101 is a question of law that may contain underlying
issues of fact. “We review the [Examiner’s] ultimate conclusion on patent
eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365

2 Throughout this Decision we refer to the Appeal Brief filed January 3,
2018 (“Appeal Br.”); Final Office Action mailed November 13, 2017 (“Final
Act.”); and the Examiner’s Answer mailed April 5, 2018 (“Ans.”).
Appellant did not file a reply to the Examiner’s Answer.
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(Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn to patent-eligible
subject matter is an issue of law that we review de novo.”).
35 U.S.C. § 101 Rejection
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
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, 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.”); 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.”).
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Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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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. (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.
The United States Patent and Trademark Office “USPTO” published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine whether the
claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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
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(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 Memorandum.
DISCUSSION
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 5. Specifically, the Examiner determines the claims are directed
to collecting and analyzing information, which is similar to concepts found
abstract in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016) and FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed.
Cir. 2016). Final Act. 5. Further, the Examiner finds that the additional
limitations of the claims recite generic computer components and functions
that are well understood routine and conventional and thus do not amount to
significantly more than the abstract idea. Final Act. 5–6.
The Judicial Exception
Appellant argues the claims do not recite concepts similar to those at
issue in Electric Power Group and FairWarning. Appeal Br. 11–12.
Appellant states that the claims do recite analytic processing to suppress
data, but argues the claims also recite more in the specific application of the
analytical processing performed, citing the limitations of claim 1 directed to
searching providers systems for matches, transmitting a request to suppress a
match listing with confidence scores and receiving an acknowledgement to
accept the request. Appeal Br. 11–12. Further, Appellant argues the claims
at issue in FairWarning, which dealt with fraud and misuse detection, are
unlike the current claims. Appeal Br. 12. Additionally, Appellant argues
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the Examiner addressed the claims at a high level of abstraction and
overgeneralized the claims which is improper. Appeal Br. 12–13 (citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
We are not persuaded of error by Appellant’s arguments and concur
with the Examiner that representative claim 1 sets forth an abstract concept
of collecting information, analyzing it, and displaying the results (a mental
process).
Claim 1 recites computer implemented steps of receiving an
indication to suppress a listing (a data gathering or observation element);
retrieving a list of provider systems (a data gathering or observation
element); for each provider, searching for listings having matching
identification data (a data gathering or observation element); for each
provider receiving the matching listings (an analysis, matching, and a
communication of the result of the analysis); for each provider transmitting a
request to suppress the matching listing where each matching listing has a
confidence score (an analysis, the confidence score, and a communication of
the result of the analysis); and receiving an acknowledgement to suppress
the matching listing (a data gathering or observation element). We consider
these limitations to recite an abstract mental process. These steps can be
performed in the human mind as they are merely gathering data, analyzing
the data, and communicating the results, a concept similar to that at issue in
Electric Power Group. The claims at issue in Electric Power Group recited
several steps of receiving data from various sources, detecting and analyzing
the data, and displaying the data. Elec. Power Grp., 830 F.3d at 1351–52.
The court stated “we have treated collecting information, including when
limited to particular content (which does not change its character as
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information), as within the realm of abstract ideas.” Id. at 1353. Here the
claims do not recite the content of the information by its subject, nor do they
recite the source of the information with any particularity, indeed the
Specification states that it can be from the Internet or a plurality of sources.
See Spec. ¶ 2. Thus, we concur with the Examiner that the claims recite a
concept of gathering data, analyzing the data, and displaying/communicating
the data, which is similar to concepts found abstract by the courts such as in
Electric Power Group. See also Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (claim to collecting and
comparing known information determined to be steps that can be practically
performed in the human mind); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.”); October
2019 Update: Subject Matter Eligibility 7 (discussing Electric Power Group
and mental processes), available at https://www.uspto.gov/sites/default/
files/documents/ peg_oct_2019_update.pdf. The fact that the data comes
from users, databases, and content providers does not preclude a
determination that the claim recites a mental process. See, e.g., Voter
Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1385 (Fed.
Cir. 2018) (explaining that the claimed steps of voting, verifying the vote,
and submitting the vote for tabulation are human cognitive actions that
humans have performed for hundreds of years despite the fact that the steps
in the claim were performed on a computer).
Thus, we are we are not persuaded that the Examiner erred by over
generalizing the claim. As detailed above the claim recites numerous data
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gathering, analysis, and communication steps and as such recites an abstract
idea which is not unlike the abstract idea at issue in Electric Power Group.
As such, we concur with the Examiner and consider representative claim 1
to recite an abstract concept.
Integration of the Judicial Exception into a Practical Application
The Examiner finds that the additional claim limitations do not recite
an improvement to a technical field or a technology by improving the
functioning of the computer itself or linking the use of the abstract idea to a
particular technological environment. Final Act. 6.
Appellant argues that the claims are directed to improvements in
efficiency of computer software performance which is sufficient to draw the
claims to patent eligible subject matter. App Br. 13–14 (citing Enfish).
Appellant argues that “claim 1 improves the performance of search engine
technologies by suppressing duplicate listings on one or more listing
provider systems from a single source system” and cites to paragraphs 6, 11,
18, 31, 38, 45 and 49 to support this assertion. Appeal Br. 14. Appellant
asserts the “claimed solution addresses the problem of suppressing duplicate
listings in search engine technologies caused by using web crawler
applications.” Appeal Br. 14.
Further, Appellant asserts that “claim solution provides a particular
useful application (for suppressing duplicate listings caused by web crawler
applications on one or more listing provider systems) that is particular to
computer search engines, which is analogous to the additional elements in
DDR Holdings.” Appeal Br. 15. Additionally, Appellant argues that the
representative claim 1 of the present application is similar to the claims at
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issue in McRO in that it offers an improvement in search engine technology
and recites a specific set of ordered rules, e.g., suppression rules. Appeal Br.
16–18 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)).
We are not persuaded of error by Appellant’s arguments. As
discussed above, we concur with the Examiner that representative claim 1
recites an abstract idea. Further, we do not consider that the claim integrates
the abstract idea into a practical application because we do not find that the
claim recites an improvement to the functioning of the computer or other
technology or otherwise tied to technology.
We are not persuaded of error by Appellant’s argument, which relies
upon Enfish, DDR, and McRO, and which asserts the claim is directed to
improving computer technology or other technology. In DDR Holdings, the
claimed invention created a hybrid web page that combined advantageous
elements from two web pages, bypassing the expected manner of sending a
visitor to another party’s web page, in order to solve the internet-centric
problem of retaining website visitors. DDR Holdings, 773 F.3d at 1257–59.
The Enfish court found “the plain focus of the claims is on an improvement
to computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.” Enfish, 822 F.3d at 1336. Here,
we do not find that Appellant’s arguments directed to the claims improving a
computer technology or that the claims solve a problem particular to
computer search engines (Internet centric problem) are commensurate with
the scope of representative claim 1. While, Appellant’s Specification
identifies that the invention is directed to the de-duplication of web content
and duplication can be caused by the nature of web crawlers, the claim does
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not recite the Internet or web providers as the source providers for which the
suppression (de-duplicating) of data is performed. Spec. ¶¶ 6, 11. As such,
representative claim 1 is not limited to improving a web or Internet centric
technology as in DDR, but rather is applicable to any situation where there
are plural sources of information which may be duplicative (e.g. data
produced as part of litigation discovery, or part of a FOIA request). Further,
the claims do not recite limitations directed to actually suppressing the
matching data, but rather requesting the data to be suppressed. Thus, the
improvement discussed in Appellant’s Specification, the suppression of
duplicate data, is not actually claimed.
Additionally, we note that the Specification does not identify that the
method changes the operation of a computer to improve the function of the
computer, but rather only improves the data provided for “selecting a single
accurate listing and suppressing other duplicate listings.”. Id. ¶ 1. Thus, the
representative claim, when interpreted in light of the Specification, merely
recites use of a computer as a tool to implement a concept of collecting
information, analyzing it, and displaying the results, a mental process (an
abstract idea). See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Unlike Enfish, [the claim] does not claim a software
method that improves the functioning of a computer . . . [but] claims a
‘process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.’”) (citation omitted)).
Further, we are not persuaded that the claimed application of rules
based upon identified features recites significantly more and draws the claim
to patent eligible subject matter. In McRO, the court reviewed claims which
use “a combined order of specific rules that renders information into a
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specific format that is then used and applied to create desired results:
a sequence of synchronized, animated characters.” McRO, 837 F.3d at 1315.
The court found that the claims did not “simply use a computer as a tool to
automate conventional activity,” but instead used the computer to “perform a
distinct process” that is carried out in a different way than the prior non-
computer method to improve the technology of (3-D animation techniques).
See McRO, 837 F.3d at 1314–16. Here, as discussed above, claim 1 recites
several steps of gathering data and analysis steps of matching data and a
confidence score associated with the data matching. The claim does not
recite any specific rules or steps used to determine the match or how the
confidence score is generated. Thus, the claim generically recites analysis
but does not recite rules and there is no evidence that the claim performs a
distinct process that is carried out in a different way than the prior non-
computer method.
As such, we are not persuaded of error in the Examiner’s rejection by
Appellant’s argument that the claim improves a computer technology or
other technology, and we do not consider representative claim 1 to recite a
practical application of the abstract concept.
Significantly More than the Abstract Idea
Under the Memorandum, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
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well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Representative claim 1 recites the additional elements of a processing
device and a database. Appellant’s Specification describes a processing
device as a computer in general terms including any of plural generic
processing devices. Spec. ¶ 77. Similarly, Appellant’s Specification
discusses the use of a database in a conventional manner as storing data.
Spec. ¶ 4. As such, the recitation of receiving data from a database and
receiving data from a processing device are recitations of well-understood,
routine, conventional activities. See MPEP § 2106.05(d) II (iv).
Thus, we concur with the Examiner that the additional elements recite
well known elements.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that representative claim 1 recites an abstract
idea; a method of collecting/gathering information, analyzing it, and
displaying the results (mental processes). Further, Appellant’s arguments
have not persuaded us that the Examiner erred in finding that the claim is
not: directed to an improvement in the functioning of the computer or to
other technology or other technical field; directed to a particular machine;
directed to performing or affecting a transformation of an article to a
different state or thing; or directed to using a judicial exception in some
meaningful way beyond linking the exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort to
monopolize the judicial exception. For these reasons, we are unpersuaded
that the claim recites additional elements that integrate the judicial exception
into a practical application nor do the claims add a specific limitation
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beyond the judicial exception that is not “well-understood, routine,
conventional. See Memorandum, 84 Fed. Reg. at 54. Accordingly, we
sustain the Examiner’s rejection of claim 1, and claims 3 through 14, 16
through 20, 22 through 24, and 26 grouped with claim 1, under 35 U.S.C.
§ 101 as being directed to a patent-ineligible abstract idea, that is not
integrated into a practical application, and does not include an inventive
concept.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3 through 14,
16 through 20, 22 through 24, and 26, under 35 U.S.C. § 101.
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–14,
16–20,
22–24, 26
101 Eligibility 1, 3–14, 16–20,
22–24, 26

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