Case: 23-1418 Document: 24 Page: 1 Filed: 12/20/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: SAUL ELBAUM,
Appellant
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2023-1418
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/987,031.
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Decided: December 20, 2023
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SAUL ELBAUM, Potomac, MD, pro se.
MONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Katherine K. Vidal. Also represented by MICHAEL
S. FORMAN, AMY J. NELSON, FARHEENA YASMEEN RASHEED.
______________________
Before REYNA, HUGHES, and STARK, Circuit Judges.
PER CURIAM.
Saul Elbaum applied for a patent that would allow re-
tail stores to offer products at lower prices than internet
stores. The examiner issued a final rejection finding claims
23–36 of U.S. Patent Application No. 16/987,031 ineligible
under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103.
Case: 23-1418 Document: 24 Page: 2 Filed: 12/20/2023
2 IN RE: ELBAUM
The Patent Trial and Appeal Board affirmed. Because we
conclude that the Board correctly found claims 23–36 are
ineligible under 35 U.S.C. § 101, we affirm.
I
Mr. Elbaum filed Patent Application No. 16/987,031 ti-
tled “A Retail Store That Also Sells Internet Items.” The
patent application is directed to methods allowing tradi-
tional retail stores to compete with internet stores by offer-
ing the same products in store at lower prices. Claim 23 is
representative:
23. A method of enabling a person to find an item for
sale from a seller via the internet and to acquire that
item at a lower price from the same seller via a walk-
in store comprising:
a) finding an item for sale from a seller via the in-
ternet;
b) viewing the website of a walk-in store to see if
the item is available for sale via the website of the
walk-in store despite the item not being stocked in
the walk-in store;
c) buying the item from the walk-in store via the
website of the walk-in store;
d) enabling the walk-in store to retain a portion of
the payment for taxes, expenses and profit, and to
forward the balance of the payment to the seller of
the item;
e) enabling the seller of the item to identify the
walk-in store from which that payment was re-
ceived; and
f) enabling the seller of the item to ship the item.
Case: 23-1418 Document: 24 Page: 3 Filed: 12/20/2023
IN RE: ELBAUM 3
S. Appx. 1 42. The examiner rejected claims 23–36 under 35
U.S.C. § 101 and rejected claims 23–27 and 29–36 as obvi-
ous over prior art references Oayda 2 and Walker 3, and
claim 28 as obvious over Oayda, Walker and Townsend. 4
The Board affirmed the examiner’s rejections. Mr. Elbaum
sought rehearing, but the Board denied the request.
Mr. Elbaum now appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
II
Patent eligibility is a question of law that may contain
underlying issues of fact. In re Marco Guldenaar Holding
B.V., 911 F.3d 1157, 1159 (Fed. Cir. 2018). “We review the
Board’s legal decisions de novo and its factual determina-
tions for substantial evidence.” Fanduel, Inc. v. Interactive
Games LLC, 966 F.3d 1334, 1343 (Fed. Cir. 2020). Substan-
tial evidence “means such relevant evidence as a reasona-
ble mind might accept as adequate to support a
conclusion.” Id. (citing Consol. Edison Co. v. N.L.R.B., 305
U.S. 197, 229 (1938)).
A
We apply the Supreme Court’s two-step framework to
determine patent eligibility. See Alice Corp. Pty. Ltd. v.
1 “S. Appx.” refers to the Supplemental Appendix
filed with the Director’s response brief.
2 U.S. Patent Application Publication No. 2016/
0117744 A1 (PCT filed June 2, 2014, published April 28,
2016).
3 U.S. Patent Application Publication No. 2002/
0178071 A1 (filed July 7, 1999, published November 28,
2002).
4 U.S. Patent Application Publication No.
2010/0063891 A1 (filed Sept. 26, 2008, published March 11,
2010).
Case: 23-1418 Document: 24 Page: 4 Filed: 12/20/2023
4 IN RE: ELBAUM
CLS Bank Int’l, 573 U.S. 208, 217 (2014). First, we deter-
mine whether the claim is directed to a “patent-ineligible
concept,” such as an abstract idea. Id. If so, we 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.” Id. at 221
(quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72, 79–80 (2012)). If the elements involve
“well-understood, routine, [and] conventional activity pre-
viously engaged in by researchers in the field” they do not
constitute an inventive concept. Mayo, 566 U.S. at 72–73.
Under Alice step one, the Board found that representa-
tive “claim 23 recites managing sale transaction activity by
paying a transaction fee for sales of non-stocked items,”
which is a method of organizing human activity, and thus,
an abstract idea. S. Appx. 12–13. We agree. In a case in-
volving another one of Mr. Elbaum’s patent applications,
we reviewed similar claims and held that they were patent
ineligible under § 101. In re Elbaum, No. 2021-1719, 2021
WL 3923280, at *1 (Fed. Cir. Sept. 2, 2021) (non-preceden-
tial). There, the claim “recite[d] a method for enabling an
internet seller to pay a finder’s fee to a retail store when a
customer finds the internet seller’s product through adver-
tising in the retail store.” Id. at *2. We held that such a
claim is directed to an abstract idea as it is directed to mere
formation and manipulation of economic relations. Id. (cit-
ing Content Extraction & Transmission LLC v. Wells Fargo
Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)). Similarly
here, the claim is directed to an abstract idea—managing
commercial and legal interactions—not eligible for patent
protection.
Under Alice step two, the Board reviewed the addi-
tional claim elements and found that “each step does no
more than require a generic computer to perform generic
computer functions;” and that even as an ordered combina-
tion, “the computer components . . . add nothing that is not
already present when the steps are considered separately.”
Case: 23-1418 Document: 24 Page: 5 Filed: 12/20/2023
IN RE: ELBAUM 5
S. Appx. 17. We agree with the Board that nothing in the
claim recites an inventive concept to transform the abstract
idea into patent-eligible subject matter. The claim uses ge-
neric computer functions to manage commercial sale trans-
action activities by paying a transaction fee for sales of non-
stocked items. See Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (holding that
claims did not satisfy Alice step two because they used “ge-
neric computers to perform generic computer functions”).
Mr. Elbaum argues that representative claim 23 is eli-
gible because it has “practical steps,” namely allowing
sellers to make sales in other states without filing tax re-
turns in those other states by retaining a portion of the
payment for taxes and forwarding the balance to the seller.
Appellant’s Br. 5–8. However, even if Mr. Elbaum is correct
that the claimed method provides a practical solution to a
problem faced by online sellers, the utility of an abstract
idea is insufficient to confer patent eligibility. See Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1380 (Fed. Cir.
2016). Thus, we hold that the claim does not include an in-
ventive concept that would render it patent-eligible.
Because we agree with the Board that the claims are
not patent-eligible, we affirm. 5
AFFIRMED
COSTS
No costs.
5 Because we affirm the Board’s finding of ineligibil-
ity, we need not reach the Board’s determinations of obvi-
ousness.