Zamer, Kamal et al.

Patent Trials and Appeals Board

Jan 2, 2020

14226399 - (D) (P.T.A.B. Jan. 2, 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.
14/226,399 03/26/2014 Kamal Zamer E1559.10117US01 2356
126665 7590 01/02/2020
Maschoff Brennan/eBay
1389 Center Drive, Ste. 300
Park City, UT 84098
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
docket@mabr.com
kclark@mabr.com
rgilmore@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KAMAL ZAMER, LUCY MA ZHAO,
and JAYASREE MEKALA
________________

Appeal 2019-002193
Application 14/226,399
Technology Center 3600
________________

Before ERIC S. FRAHM, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–8 and 10–21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to implementing real-time event notifications.
Spec. ¶ 1. Claim 1 is illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, eBay Inc. is the real party in
interest. Appeal Br. 4.
2 Claim 9 is cancelled. Appeal Br. 16.
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1. A system comprising:
a non-transitory memory storing information about a user
account, wherein the information comprises preferences of a
user; and
one or more hardware processors coupled to the non-
transitory memory and configured to read instructions from the
non-transitory memory to cause the system to perform
operations comprising:
receiving, via short distance wireless electronic
communication, a plurality of event notifications broadcasted
from mobile communication devices of other users within a
range of the short distance wireless electronic communication,
the event notifications indicating occurrences of events detected
by the mobile communication devices of the other users;
filtering the plurality of event notifications based on the
preferences of the user by:
scanning the non-transitory memory for information
pertaining to the user;
identifying, in the non-transitory memory, a previous
transaction of the user related to the event notifications; and
selecting a subset of the event notifications based on the
previous transaction of the user related to the event notifications;
presenting, via an electronic display, the subset of the
event notifications to the user based on the filtering; and
broadcasting, via short distance wireless electronic
communication, the subset of the event notifications to other
mobile communication devices within the range of the short
distance wireless electronic communication.

Appeal Br. 15 (Claims Appendix) (emphases added).

REJECTION
Claims 1–8 and 10–21 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 2–5.

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ANALYSIS
I. Claims 1–8 and 10–21 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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. E.g., 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
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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);
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
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 192 (“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.”).
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). “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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
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 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 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.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite managing
interactions between people. Ans. 4. The Examiner also determines the
present claims do not amount to significantly more than an abstract idea
itself because the abstract idea is implemented using additional elements that
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are well-understood, routine, and conventional. Id. at 6–7 (citing O’Neill
(US Patent No. 6,069,588; issued May 30, 2000)).
Appellant argues the present claims do not recite an abstract idea
because the claims recite specific limitations regarding implementation of
real-time event notifications and the Examiner’s analysis is oversimplifying
the present claims. Appeal Br. 8–9; Reply Br. 2–3. Appellant argues,
similar to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308–14
(Fed. Cir. 2016), and Visual Memory, LLC v. NVIDIA Corporation, 867 F.3d
1253 (Fed. Cir. 2017), the present claims are directed to an improvement in
computer-related technology to implement real-time event notifications.
Appeal Br. 9–11 (citing Spec. ¶¶ 2, 39, 41, 43–48, 55); Reply Br. 3–5.
Appellant argues the present claims recite a combination of non-
conventional and non-generic arrangement of known, conventional
elements, which results in an inventive concept. Appeal Br. 12–13; Reply
Br. 5–6. Appellant argues the Examiner fails to provide any evidence to
support the finding that the abstract idea is implemented using generic
components that are well-understood, routine, and conventional previously
known to the industry. Appeal Br. 13–14 (citing USPTO Commissioner for
Patents Memorandum dated Apr. 9, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision” (Berkheimer v. HP, Inc.)); Reply Br. 6. Appellant
argues the Examiner fails to follow the “2019 Revised Patent Subject Matter
Eligibility Guidance” (“Revised Guidance”) because the Examiner does not
map the abstract idea to any of the three categories (i.e., mathematical
concepts, certain methods of organizing human activity, mental processes).
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Reply Br. 7–11.3 We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 1,4 reproduced above (see supra at
1–2), recite managing personal behavior or interactions between people
because event notifications for events such as concerts cause some people to
attend those events. See also Ans. 4 (the Examiner concludes the present
claims recite managing interactions between people). According to the
Memorandum, managing personal behavior or interactions between people
falls into the category of certain methods of organizing human activity. See
Memorandum. Moreover, those certain methods of organizing human
activity are a type of an abstract idea. See id.
We, therefore, disagree with Appellant’s argument the present claims
do not recite an abstract idea because the claims recite specific limitations
regarding implementation of real-time event notifications and the
Examiner’s analysis is oversimplifying the present claims. Appeal Br. 8–9;
Reply Br. 2–3; see also Ans. 4 (the Examiner concludes the present claims
recite managing interactions between people). We also disagree with
Appellant’s argument that the Examiner fails to follow the Revised
Guidance because the Examiner does not map the abstract idea to any of the
three categories. Reply Br. 7–11; see also Ans. 4 (the Examiner concludes

3 This argument is timely because the Revised Guidance was announced
between the filing of the Appeal Brief and the Reply Brief.
4 Claim 1, reproduced above with emphases, recites similar features as
independent claims 10 and 17. Appellant does not argue claims 2–8, 11–16,
and 18–21 separately. Appeal. Br. 7–14. We, therefore, group claims 1–8
and 10–21 together and refer to those claims as the “present claims.”
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the present claims recite managing interactions between people).
Because the present claims recite managing personal behavior or
interactions between people, which falls into the category of certain methods
of organizing human activity (i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that,
similar to Enfish, McRO, and Visual Memory, the present claims recite an
improvement in computer-related technology by implementing real-time
event notifications. Appeal Br. 9–11 (citing Spec. ¶¶ 2, 39, 41, 43–48, 55);
Reply Br. 3–5.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”) addresses how we consider any
evidence that is presented to us. The Update states:
[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
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35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Update, 13 (emphasis added).
In this case, the Examiner concludes the present claims do not recite
an improvement to technology. Final Act. 6–7; Ans. 4–6. Consequently, we
focus only on any evidence Appellant cites pursuant to the Update. Here,
although Appellant identifies paragraphs 2, 39, 41, 43–48, and 55 of the
Specification, those paragraphs merely discuss notifying a large number of
users in real-time when a spontaneous event is about to occur and enabling
users to purchase tickets to that event (i.e., certain methods of organizing
human activity, which is an abstract idea as discussed supra), not an
improvement to technology. Appeal Br. 9–11 (citing Spec. ¶¶ 2, 39, 41, 43–
48, 55); Reply Br. 3–5. Paragraphs 2, 38, 41, 43–48, and 55 of the
Specification are unlike the technological improvements in Enfish.
In Enfish, the Federal Circuit considered how the present invention
was superior to the technology in the prior art. That is, the court considered
“the specification’s emphasis that ‘the present invention comprises a
flexible, self-referential table that stores data,’” “[t]he specification also
teaches that the self-referential table functions differently than conventional
database structures,” “traditional databases, such as ‘those that follow the
relational model and those that follow the object oriented model’ are inferior
to the claimed invention.” Enfish, LLC v. Microsoft Corp., 822 F.3d at 1337
(interior citations omitted). Moreover, “‘[t]he structural requirements of
current databases require a programmer to predefine a structure and
subsequent [data] entry must conform to that structure,’ the ‘database of the
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present invention does not require a programmer to preconfigure a structure
to which a user must adapt data entry.’” Id. Then, the court determined the
claims “achieve[d] other benefits over conventional databases, such as
increased flexibility, faster search times, and smaller memory requirements.”
Unlike the claims of Enfish, the present claims do not recite “a specific
improvement to the way computers operate, embodied in the self-referential
table.” Id. at 1336.
Similar to the Enfish argument, Appellant does not identify
persuasively how paragraphs 2, 39, 41, 43–48, 55 of the Specification sets
forth an improvement in technology. Moreover, the subject claim
considered by the McRO court concerned a method for automatically
animating lip synchronization and facial expressions. McRO, 837 F.3d at
1303. The McRO court concluded the subject claims did not recite an
abstract idea because the computer animation improved the prior art through
the use of rules, rather than artists, to set morph weights and transitions
between phonemes. Id. at 1308. Thus, the claimed invention in McRO
allowed for computer performance of animation steps that previously had to
be performed by human animators. Id. at 1309. The subject claims in
McRO used “limited rules in a process specifically designed to achieve an
improved technological result” over “existing, manual 3-D animation
techniques.” Id. at 1316 (emphasis added). In contrast to the claims of
McRO, the present claims do not recite rules for lip sync and facial
expression animation or an improvement in computer technology.
Similar to the Enfish and McRO arguments, Appellant does not
identify persuasively how paragraphs 2, 39, 41, 43–48, 55 of the
Specification sets forth an improvement in technology. The Visual Memory
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court focused on how the claims presented an improvement over prior art
memory systems. In particular, the court noted:
[a]lthough prior art memory systems possessed the flexibility to
operate with multiple different processors, this one-size-fits-all
approach frequently caused a tradeoff in processor performance.
The ’740 patent’s teachings obviate the need to design a separate
memory system for each type of processor, which proved to be
costly and inefficient, and, at the same time, avoid the
performance problems of prior art memory systems. Finally, in
addition to enabling interoperability with multiple different
processors, the ’740 patent specification explains that the
selective definition of the functions of the cache memory based
on processor type results in a memory system that can
outperform a prior art memory system that is armed with “a
cache many times larger than the cumulative size of the subject
caches.”
Visual Memory, LLC v. NVIDIA Corporation, 867 F.3d at 1259 (internal
citations omitted) (emphases added). Dissimilar to the claims in Visual
Memory, the present claims do not recite an enhanced computer memory
system described above.
Instead, the present claims recite an abstract idea as discussed supra,
in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“non-transitory memory,”5 “processor,”6 “mobile communications device,”
and “an electronic display”7) recited in the present claims are merely generic
computer components used to implement the abstract idea. Spec. ¶¶ 9, 11,
17, 57, 58. Further, the additional elements individually and in combination,
does not integrate the judicial exception into a practical application.

5 Claims 1 and 17 recite this feature, whereas claim 10 does not.
6 Claims 1 and 10 recite this feature, whereas claim 17 does not.
7 Claims 1 and 17 recite this feature, whereas claim 10 does not.
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Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented using additional elements that are well-understood, routine,
and conventional. Ans. 6–7 (citing O’Neill, Abstract). The Specification
supports the Examiner’s determination in this regard because it explains that
“non-transitory memory,” “processor,” “mobile communications device,”
and “an electronic display” are generic components. Spec. ¶¶ 9, 11, 17, 57,
58. Appellant’s Specification indicates these elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id. Moreover, the additional elements recited in
the present claims, taken individually and in combination, do not result in
the claim, as a whole, amounting to significantly more than the judicial
exception.
We, therefore, disagree with Appellant’s argument that the Examiner
fails to provide any evidence to support the finding the abstract idea is
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implemented using additional elements that are well-understood, routine,
and conventional previously known to the industry. Appeal Br. 13–14;
Reply Br. 6.
We also disagree with Appellant’s argument that the present claims
recite a combination of non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept.
Appeal Br. 12–13; Reply Br. 5–6. Significantly, we note that Appellant
does not argue specifically how the present claims provide a non-
conventional and non-generic arrangement of known, conventional pieces
when considered as an ordered combination.8 Moreover, we note that the
Appellant does not refer to any evidence (e.g., a specific paragraph in the
Specification, an affidavit, etc.) that discusses why or how the particular
placement of the “non-transitory memory,” “processor,” “mobile
communications device,” and “an electronic display” within the system
results in a non-conventional and non-generic arrangement of known,
conventional pieces when considered as an ordered combination. As a
result, we conclude that the present claims recite an abstract idea using
generic components as discussed supra, in §§ I.C.1. and I.C.2. or at best,
improving an abstract idea—not an inventive concept.
Appellant does not argue claims 2–8 and 10–21 separately with
particularity, but assert the § 101 rejection of those claims should be
withdrawn for at least the same reasons as argued for independent claim 1.

8 Although Appellant argues the Examiner does not make a conclusion that
the present claims provide a non-conventional and non-generic arrangement
of known, conventional pieces when considered as an ordered combination
(Appeal Br. 12–13; Reply Br. 5–6), we note that the Examiner does make
this conclusion (Final Act. 3–4; Ans. 5–6).
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Appeal Br. 7–14. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claims 1, 10, and 17; and (2) dependent claims 2–8, 11–16,
and 18–21 under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

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. § 1.136(a)(1)(iv).
AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 10–21 101 Eligibility 1–8, 10–21