Robert Kalin

Patent Trials and Appeals Board

Nov 12, 2019

13015622 - (D) (P.T.A.B. Nov. 12, 2019)

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.
13/015,622 01/28/2011 Robert Kalin E2017-700619 2973
26167 7590 11/12/2019
FISH & RICHARDSON P.C. (AT)
P.O BOX 1022
Minneapolis, MN 55440-1022
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/12/2019 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT KALIN
____________

Appeal 2018-006076
Application 13/015,622
Technology Center 3600
____________

Before CAROLYN D. THOMAS, ERIC B. CHEN, and
SCOTT RAEVSKY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Etsy, Inc.
Appeal Br. 3.
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The present invention relates generally to virtual shopping carts
within an electronic commerce environment. See Abstr.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method of shopping within an electronic commerce
environment, the method comprising acts of:
enabling a first user of a plurality of users of the
electronic commerce environment to add one or more items to a
virtual shopping cart of the first user that is maintained by a server
computer system;
generating, by the server computer system, statistical data
related to the one or more items, the statistical data including a non-
zero sum total quantity of at least one of the one or more items that
are contained in virtual shopping carts of the plurality of users of the
electronic commerce environment other than the first user; and
providing the statistical data including the non-zero sum
total quantity of the at least one of the one or more items that are
contained in the virtual shopping carts of the plurality of users of the
electronic commerce environment other than the first user to the first
user in a single web page that is generated by the server computer
system.

Appellant appeals the following rejections:
R1. Claims 1–21 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Non-Final
Act. 2–5.; and
R2. Claims 1–21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Minsky (US 2009/0043674 A1, Feb. 12, 2009), Siddique
(US 2010/0030578 A1, Feb. 4, 2010), and Soto (US 2011/0004533 A1, Jan.
6, 2011). Final Act. 6–10.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
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thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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 the 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.”). For example, 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)).
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Recently, the USPTO published revised guidance on the application
of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
Under the Revised Guidance “Step 2A,” the office first looks 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)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) 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. 84 Fed. Reg. at 56.

Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, system
claim 11 and non-transitory computer readable medium claim 21, the
Examiner at least determines that the claims are directed to “(1) adding
items to a virtual shopping cart, (2) track data associated with said virtual
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shopping cart, and (3) provide statistical information about shopping carts to
other users” (Non-Final Act. 3), which we conclude are fundamental
economic practices, e.g., sales activities or behaviors. Such behaviors are
akin to certain methods of organizing human activity, which is a type of
abstract idea.
For example, Appellant’s Specification discloses:
Various embodiments of the present disclosure are directed to systems
and methods for shopping in an electronic commerce environment, in
particular, through an e-commerce website. One aspect of the
disclosure provides users of the e-commerce website with the ability
to create a virtual shopping cart containing one or more items, and to
share access to the cart with one or more other users.
Spec. 2:2–6.
According to yet another aspect, the e-commerce website may provide
statistics with respect to virtual shopping carts. In one embodiment, a
user may see if a selected item on the e-commerce website has been
added to another user’s virtual shopping cart. For example, “this item
is in 3 other shopping carts.” This information may be combined with
inventory information (e.g., how many units of the item are available
for sale). The statistical information may be provided textually or
graphically, such as in a chart, map, or other illustrative device. The
statistical information provides users with the ability to, for example,
gauge interest in a particular item, or as a marketing or motivational
selling tool.
Id. at 2:23–30.
In other words, Appellant’s Specification describes shopping in an
electronic commerce environment, whereby users create virtual shopping
carts containing one or more items. An e-commerce website may provide
statistics with respect to the virtual shopping carts, i.e., if the same item has
been added to another user’s virtual shopping cart.
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Here, claim 1 recites at least the following limitations: (1) “enabling a
first user . . . to add one or more items to a virtual shopping cart,” (2)
“generating statistical data related to the one or more items . . . that are
contained in virtual shopping carts of users . . . other than the first user,” and
(3) “providing the statistical data . . . to the first user in a single web page.”
Claim 1. These limitations, under their broadest reasonable interpretation,
recite sales activities because the limitations all recite operations that would
ordinarily take place in a commercial environment.
Similarly, at least the following decisions from our reviewing court
have found many types of fundamental commercial practices patent
ineligible: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015), cert. denied, 136 S. Ct. 701 (mem) (2015) (offer-based price
optimization); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014) (transaction guaranty); Personalized Media Commc’ns, L.L.C. v.
Amazon.com Inc., 671 F. App’x 777 (mem) (Fed. Cir. 2016) (receiving
instructions for ordering); Macropoint, LLC v. Fourkites, Inc., 671 F. App’x
780 (mem) (Fed. Cir. 2016) (tracking freight); Wireless Media Innovations,
LLC v. Maher Terminals, LLC, 636 F. App’x 1014 (mem) (Fed. Cir. 2016)
(monitoring shipping containers); America’s Collectibles Network, Inc. v.
Jewelry Channel, Inc. USA, 672 F. App’x 997 (mem) (Fed. Cir. 2017)
(conducting reverse auction by adjusting price and inventory); and EasyWeb
Innovations, LLC v. Twitter, Inc., 689 F. App’x 969 (Fed. Cir. 2017)
(receiving, authenticating, and publishing data).
Appellant challenges the Examiner’s determinations on the ground
that the Examiner has not identified any court decisions that are similar to
the concepts in the claimed invention. See Appeal Br. 7–8. We direct
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Appellant’s attention to the decisions cited supra in addition to the decisions
cited by the Examiner, which show similar concepts. See Ans. 6.
Appellant also contends that “[t]he alleged abstract idea identified by
the Examiner is broader than the actual language of the claims and
mischaracterizes and overgeneralizes what is recited.” Appeal Br. 10.
Although we agree that the Examiner may have condensed the claims
to “(1) adding items to a virtual shopping cart, (2) track data associated with
said virtual shopping cart, and (3) provide statistical information about
shopping carts to other users” (Non-Final Act. 3), we note that this is simply
a higher level of abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240-41 (Fed. Cir. 2016) (“An abstract idea can generally be described at
different levels of abstraction. As the Board has done, the claimed abstract
idea could be described as generating menus on a computer, or generating a
second menu from a first menu and sending the second menu to another
location. It could be described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a computer.”)
Under the first step (i.e., prong 1) of the Alice framework, “[w]e must
first determine whether the claims at issue recite a patent-ineligible
concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355. Whichever
way the concept is described, we do not see that Appellant has adequately
shown that claim 1 does not recite an abstract idea. Just because the claim
includes more words than the phrase the Examiner uses, as an articulation of
the abstract idea to which he/she found the claim to recite, is an insufficient
reason to persuasively argue that claim 1 does not recite an abstract idea.
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Further, the identified abstract idea need not encompass every claim
limitation. Otherwise, there would be no need for step two of the Alice
inquiry. Alice, 573 U.S. at 216.
Regarding Appellant’s preemption contention (see Appeal Br. 11), we
note that although pre-emption “‘might tend to impede innovation more than
it would tend to promote it,’ thereby thwarting the primary object of the
patent laws” (Alice, 573 U.S. at 216 (citing Mayo, 566 U.S. at 71)), “the
absence of complete preemption does not demonstrate patent eligibility”
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)). Moreover, because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, . . . preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d
at 1379.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude is at least
a fundamental economic practice.
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “a server computer system,” “a single web page,” and “a statistical
data component”) do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for
a generic computer); (3) do not effect a transformation of a particular article
to a different state; and (4) are not applied in any 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. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Appellant contends the claims “provide for an improvement in the
field of electronic commerce.” Appeal Br. 13, citing Spec. 20:26 to 21:2.
Specifically, Appellant’s Specification states:
The information provided in item statistics panel 514 may be useful to
the user in a number of ways. For example, by knowing how many
units of an item are available, and how many other users have the
same item in their shopping carts, a buyer may be able to gauge the
overall degree of interest in the item and make a purchasing decision
using that knowledge. In another example, the seller of the item may
be able to use the information for marketing purposes, for example, to
encourage a user to purchase the item due to high demand by other
users, low or limited availability, price, or other considerations.

Spec. 20:26 to 21:2. In other words, Appellant’s invention provides
information relating to other users’ shopping carts, information that may be
useful in encouraging a sale.
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Although we agree that the aforementioned information may be useful
to a user in deciding whether to purchase an item, we do not see this as an
improvement to computer functionality itself. Instead, such statistical
information appears to simply hasten a user’s mental decision making
process, i.e., possibly forcing a user to make a purchasing decision more
quickly if many others are also interested in the same item.
Thus, contrary to Appellant’s argument, the claims here are unlike
those in Trading Technologies (see Appeal Br. 13) because Appellant has
not provided persuasive evidence or technical reasoning that the method of
claim 1 produces an advance in efficiency or technological improvement to
the computer data processing system itself. See Trading Technologies
International Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(nonprecedential).
Instead, the claimed features merely hastens economic tasks, i.e., by
pressuring the user to make purchasing decisions more quickly based on
other users interest in the same item, as opposed to the computer
functionality itself providing an advance in efficiency. That is, here the
arguably innovative technique of the appealed claims is inextricably a part of
the abstract idea. Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than an off-the-shelf, conventional
computer used for collecting and processing/analyzing various
information/data. Therefore, unlike Trading Technologies, the claims are
directed not to improvement in computer capabilities, but to the results of
applying an abstract idea.
For at least the reason noted supra, we determine that claim 1
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(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on 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, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Here, the Examiner determines that “[i]t is customary and usual to
provide a total of items and a total purchase price of the items shown in the
shopping cart in order to create and order, and complete a payment of said
items.” Ans. 5.
However, Appellant contends, and we agree, that “the Examiner has
not even provided any of the evidence that is required to establish a
‘reasoned explanation that supports’ a conclusion that the limitations in the
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claims of the present application constitute no more than a recitation of well-
understood, routine, and conventional activities.” Reply Br. 4.
Specifically, the Examiner has not set forth with sufficient specificity
or provided any finding (see Ans. 3–9; see also Non-Final Act. 3–5) that the
generated statistical data relating to other users is well-understood, routine,
or conventional. See Berkheimer v. HP Inc., No. 2017-1437, slip op. at 14
(Fed. Cir. Feb. 8, 2018) (“Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.”).
Thus, under Alice Step Two, the Examiner has not properly considered
the elements of the claims, both individually and “as an ordered
combination,” to determine whether the additional elements transform the
Examiner’s asserted abstract idea into a patent-eligible application.
For the above reasons under step two of Alice, we are constrained, on
this record, to reverse the Examiner’s rejection of claims 1–21 under 35
U.S.C. § 101.

Rejection under § 103(a)
Appellant contends that “[n]one of the cited references, alone or in
combination, disclose or suggest providing a user in an electronic commerce
with ‘statistical data . . . .” Appeal Br. 14. Specifically, Appellant contends
that “[t]here is no disclosure or suggestion that [the] shared shopping carts
[in Minsky] include ‘statistical data . . .’ as recited in claim 1” (id.) or that
“the merchant server generates ‘statistical data . . . .” Id. at 15. Appellant
further contend that “there is no disclosure or suggestion that the ‘shared
shopping carts’ of Siddique include any ‘statistical data . . .’ as recited in
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claim 1.” Id. Appellant also contend that “[t]here is no disclosure or
suggestion in Soto of ‘generating . . .’ or ‘providing . . . the non-zero sum
total . . .’” and “the ‘shared universal shopping cart’ of Soto is not shared
among different users.” Id. at 16. In other words, Appellant at least
contends that neither Minsky, Siddique, nor Soto teach or suggest “statistical
data” as set forth in claim 1. We agree with Appellant.
Although the Examiner finds that “[b]oth Siddique and Soto teach
data available from shopping carts across users. . . . Siddique teaches . . .
view[ing] your own cart and your buddy’s cart . . . [u]sers can share their
account resources such as shopping cart content with other members of the
shopping trip” (Ans. 11, (citations omitted)) and “[i]nventories information
of items . . . suggesting a statistic” (id. at 12), the Examiner fails to illustrate
in the combined teachings statistical data, i.e., a non-zero sum total, of the
one or more items that are contained in virtual shopping carts of users other
than the first user, as required by claim 1.
Instead, Siddique merely teaches that “a live feed can provide to users
from real stores regarding the quantity of a particular item . . . the actual
number of items in inventory.” ¶ 119. However, we note that Siddique’s
number of quantity in inventory at the stores is distinguishable from the
claimed non-zero sum total quantity of the at least one item contained in
virtual shopping carts of other users.
Additionally, Siddique teaches “users can view the contents of each
other’s shopping carts.” ¶ 198. However, we find that a view of other’s
shopping cart also fails to illustrate a “non-zero sum total quantity” of all
others, as required by claim 1, but rather an individual quantity of each user.
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Similarly, Soto also teaches “a shared shopping cart” (¶ 45) and
“inventory information” (id. at 46), which we find is likewise deficient in
teaching the aforementioned claimed limitations for similar reasons.
Thus, we disagree with the Examiner’s finding that Minsky, Siddique
and Soto, either alone or in combination, teach statistical data, i.e., a non-
zero total quantity . . . contained in virtual shopping carts of . . . other than
the first user, as recited in each of the independent claims. Because we
agree with at least one of the arguments advanced by Appellant, we need not
reach the merits of Appellant’s other arguments. Accordingly, we will not
sustain the Examiner’s obviousness rejection of claims 1–21.
Accordingly, we reverse the Examiner’s rejection of claims 1–21
under 103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103 Minsky, Siddique,
Soto
1–21
Overall
Outcome
1–21
REVERSED