Alexander LantsmanDownload PDFPatent Trials and Appeals BoardJun 11, 20212021000173 (P.T.A.B. Jun. 11, 2021) Copy Citation 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. 15/673,412 08/09/2017 Alexander D. Lantsman ALB003 6126 7590 06/11/2021 Alexander D. Lantsman 303 SEA SPRAY LANE NEPTUNE, NJ 07753 EXAMINER TALLMAN, BRIAN A ART UNIT PAPER NUMBER 3628 MAIL DATE DELIVERY MODE 06/11/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER D. LANTSMAN Appeal 2021-000173 Application 15/673,412 Technology Center 3600 ____________ Before JAMES P. CALVE, KENNETH G. SCHOPFER, and MATTHEW S. MEYERS Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 1, 4, 5, and 16–18, which are all of the pending claims. 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 the real party in interest as Alexander D. Lantsman. Appeal Br. 3. Appeal 2021-000173 Application 15/673,412 2 CLAIMED INVENTION Appellant’s claimed invention relates generally to “the field of delivery services.” Spec. ¶ 1. Claims 1 and 16 are the independent claims on appeal. Claim 1, reproduced below, with modified formatting and bracketed notations, is illustrative of the claimed subject matter. 1. A method of pre-scheduled dispatching mail, comprising: [a] assembling a plurality of selectively addressed first assemblies each including a parcel containing tangible items; [b] assembling a second assembly including the plurality of the first assemblies; and [c] providing the second assembly to a depository performing: [c1] reporting the first assemblies having mismatched names or addresses, and returning, replacing and storing the first assemblies; [c2] storing the first assemblies by automated loading/unloading equipment in a transportable container having machine-readable RFID or 1D/2D barcode identifiers; [c3] dispatching the stored first assemblies on a receipt of a notice of occurrence of a pre-determined event. Appeal Br. 17 (Claim App.). Appeal 2021-000173 Application 15/673,412 3 REJECTIONS Claims 1, 4, 5, and 16–18 are rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1, 4, 5, and 16–18 are rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Claims 1, 5, 16, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Vandervort Stiles (US 2011/0082817 A1, pub. Apr. 7, 2011) (hereinafter, “Vandervort”), UPS (“Validate an Address”) (hereinafter, “Address Validator”)2 and (“Address Validation FAQ”) (hereinafter, “Address Validation FAQ”),3 Kasahara (US 2003/0149609 A1, pub. Aug. 7, 2003), and Lert (US 2014/0308098 A1, pub. Oct. 16, 2014).4 Claims 4 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Vandervort, UPS (Address Validator and Address 2 https://www.ups.com/address_validator/search?loc=en_US, 1 page, (http://web.archive.org/web/20170709222232/https://www.ups.com/address _validator/search?loc=en_US, captured on 9 July 2019 using Wayback Machine). 3 https://www.ups.com/us/en/shipping/create/address-validator/help.page, 1 page, (http://web.archive.org/web/20170709222254/https://www.ups.com/us/en/sh ipping/create/address-validator/help.page#contentBlock-11, captured on 9 July 2019 using Wayback Machine). 4 The Examiner refers to each of the UPS webpage documents, i.e., Address Validator, Address Validation FAQ, collectively as UPS. See Final Act. 30. For ease of reference, this decision refers more particularly to each reference individually. Appeal 2021-000173 Application 15/673,412 4 Validation FAQ), Kasahara, Lert, and Rocket Lawyer, “What is a Letter of Testamentary” (hereinafter, Rocket Lawyer).5 Claims 16 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kasahara, UPS (Address Validator and Address Validation FAQ), and Lert. Claim 17 is also rejected under 35 U.S.C. § 103(a) as being unpatentable over Kasahara, UPS (Address Validator and Address Validation FAQ), Lert, and Rocket Lawyer. ANALYSIS Indefiniteness We are persuaded that the Examiner erred in rejecting claims 1, 4, 5, and 16–18 under 35 U.S.C. § 112(b). The Examiner takes the position that “reporting the first assemblies having mismatched names or addresses,” as set forth in limitation [c1] “is indefinite because the claim fails to specify what or how the names and addresses are compared against to clearly define what constitutes a match vs. what constitutes a mismatch, [and] thus the metes and bounds of the claim cannot be determined.” Final Act. 19 (emphases omitted). According to the Examiner, the Specification does not provide guidance as to “what the threshold is to determine whether a name and/or address matches, or mismatches.” Id. The Examiner rejects 5 https://www.rocketlawyer.com/article/what-is-a-letter-of-testamentary.rl, 1 page, (http://web.archive.org/web/20160708121016/https://www.rocketlawyer .com/article/what-is-a-letter-of-testamentary.rl, captured using Wayback Machine on 8 July 2016). Appeal 2021-000173 Application 15/673,412 5 independent claim 16 on a similar basis. Id. at 19–20. We disagree with the Examiner’s findings. Instead, we agree with Appellant that “the Examiner erred asserting that Claims 1 and 16 are indefinite.” Appeal Br. 6. The Specification discloses that parcels are labeled with names and delivery address of the recipients and identifies that “delivery addresses 2381–238N of the recipients 2301–230N are provided only in the instructions 206.” Spec. ¶ 25. The Specification further discloses that the “[a]ddressing data of the parcels . . . and content of the instructions 206 are recorded in the database” and “[d]iscrepancies affecting delivery of the parcels 2041–204N to their recipients 2301–230N (e.g., missing/corrupted articles, mismatched names or addresses, etc.) are reported to the sender.” Id. ¶ 29. Thus, one of ordinary skill in the art would recognize that the threshold for determining whether a name and/or address matches or mismatches a name and/or address listed in the instructions or a database is if the discrepancy affects delivery of the parcel. Therefore, we do not sustain the Examiner’s rejection of claims 1, 4, 5, and 16–18 under 35 U.S.C. § 112(b). See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the [S]pecification.”); In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (The requirement that the claims be cast in clear terms “is not a demand for unreasonable precision.”). Appeal 2021-000173 Application 15/673,412 6 35 U.S.C. § 101 Framework Section 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 U.S. 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 Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. 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, 67 (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 Appeal 2021-000173 Application 15/673,412 7 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); 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 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 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. (alterations in original) (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. Appeal 2021-000173 Application 15/673,412 8 USPTO Section 101 Guidance We are also guided by U.S. Patent and Trademark Office (“USPTO”) Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance,” the Guidance “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.” Id. The Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. at 50. Under USPTO Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including laws of nature, natural phenomena, and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong Two”).6 6 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a Appeal 2021-000173 Application 15/673,412 9 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, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56. Independent claims 1 and 16, and dependent claims 4, 5, 17, and 18 Appellant argues claims 1, 4, 5, and 16–18 as a group. Appeal Br. 7– 10. We select independent claim 1 as representative. The remaining claims 4, 5, and 16–18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework and Step 2A, Prong One of USPTO Guidance, the Examiner determines that independent claim 1 recites practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP § 2106.04(d). Appeal 2021-000173 Application 15/673,412 10 assembling a plurality of selectively addressed first assemblies each including a parcel containing tangible items; assembling a second assembly including the plurality of first assemblies; and providing the second assembly/parcels to a depository; a depository performing: reporting the first assemblies/parcels having mismatched names or addresses, and returning, replacing the first assemblies/parcels; and dispatching the stored first assemblies/parcels on a receipt of a notice of occurrence of a pre- determined event. Final Act. 21 (emphases omitted). After considering the language of the claim, the Examiner states that the claim is similar to a person assembling items into parcels (e.g. inserting papers in an envelope) that are addressed to recipients, handing these items to a person for delivery to the recipients at after an event has occurred; a person identifying when items have mismatched names or addresses which may impact delivery and returns / replaces the items; and a person delivering the items to the recipients after the event. Id. More particularly, the Examiner characterizes independent claim 1 as being directed to “a method of organizing human activity,” and steps [that] represent at least commercial interactions (e.g. steps associated with delivering parcels to people, such as assembling, providing, reporting, replacing, and dispatching), managing personal behavior or relationships or interactions between people (e.g. steps performed by a person individually and/or between persons, such as providing, reporting, replacing, and dispatching), and/or following rules or instructions (e.g. steps manually performed based on rules, such as dispatching). Id. Under Prong Two of USPTO Guidance, the Examiner determines that the identified judicial exception is not integrated into a practical application because [t]he combination of these additional elements is no more than mere instructions to apply the exception by a person, and using automated loading/unloading equipment in an extra-solution Appeal 2021-000173 Application 15/673,412 11 capacity, and generally linking the invention to a technology / field of use (e.g. RFID, barcodes, automated loading/unloading equipment). Id. at 24; see also id. at 23–24 (citing MPEP §§ 2106.05(g), (h)). In response, Appellant asserts that the “applied rejections contradict the Laws of Human Biology/Cognition and Laws of Physics/Mechanics, the Reality, and are erroneous and directed to inoperable embodiments.” Appeal Br. 7. According to Appellant, [p]er the Laws of Human Biology/Cognition and Laws of Physics/Mechanics, the first assemblies and parcels of Claims 1 and 16 or any other tangible objects: (i) CANNOT FEASIBLY be assembled, provided, stored, dispatched or otherwise mechanically processed/handled/transported using any “mental processes”, and (ii) are not and do not represent “mental processes”, and cannot by produced by using “mental processes.” Id. Under the first step of the Mayo/Alice framework and Step 2A of the USPTO Guidance, we first determine to what claim 1 is directed, i.e., whether claim 1 recites an abstract idea and if so, whether claim 1 is directed to that abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification, Appeal 2021-000173 Application 15/673,412 12 including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. Reciting a Judicial Exception In making this determination, we note that the Specification is titled “TECHNIQUES FOR PRE-SCHEDULED DISPATCHING NON- ELECTRONIC CORRESPONDENCE ON BEHALF OF A SENDER,” and states that the disclosure relates to “the field of delivery services.” Spec. Title (emphases omitted), ¶ 1. The Specification identifies that “[s]ending non-electronic correspondence may be problematic when a sender is not available for depositing the correspondence with a receiving facility (e.g., drop-off box, courier, manned office) of a respective common carrier, such as U.S. Postal Service, FedEx®, UPS®, etc.” Id. ¶ 2. According to the Specification, “timely delivery of the correspondence to their recipients is dependent on cooperation of members of household or acquaintances of the sender, their ability to locate and correctly post the correspondence, and other factors.” Id. To address these drawbacks, the present invention provides “[s]ender instructions and parcels containing pre-defined portions of non-electronic correspondence . . . to a depository coupled to a delivery services network of a common carrier. The instructions contain a listing of events which occurrences require dispatching of the parcels to their recipients.” Spec. ¶ 3. Consistent with this disclosure, independent claim 1 recites a method for “pre-scheduled dispatching mail” including steps for assembling, i.e., “assembling a plurality of selectively addressed first assemblies” (limitation [a]), “assembling a second assembly” (limitation [b]); providing, i.e., “providing the second assembly to a depository” (limitation [c]); and Appeal 2021-000173 Application 15/673,412 13 performing depository functions, i.e., “reporting the first assemblies having mismatched names or addresses, and returning, replacing and storing the first assemblies” (limitation [c1]), “dispatching the stored first assemblies” (limitation [c3]). Appeal Br. 17 (Claim App.). When considered collectively and under the broadest reasonable interpretation, the limitations of independent claim 1 recite a method with steps “similar to those steps performed by a mailroom or post office” (Final Act. 21–22) for assembling parcels (i.e., assemblies), providing assemblies to a depository, and performing depository functions which is similar to the Examiner’s characterization.7 This is an abstract idea of a “[c]ertain method[] of organizing human activity— . . . commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); [and] managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). As such, we disagree with the Appellant’s assertion that the Examiner improperly characterizes independent claim 1 as being directed to a “managing personal behavior” and “relations or interactions between people,” which Appellant groups into “mental processes.” Appeal Br. 7–8 (emphases omitted). In the Answer, the Examiner makes clear that 7 We note that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. at 1241. Appeal 2021-000173 Application 15/673,412 14 [i]n Step 2A Prong One of the Subject Matter Eligibility Framework, the steps of assembling, providing, reporting, reporting, returning, replacing, and dispatching were identified as representing certain methods of organizing human activities (e.g. commercial interactions, managing personal behavior or relationships or interactions between people, following rules or instructions). Also, in Step 2A Prong One, only the step of reporting was identified as a mental process. Ans. 8. The steps of assembling, providing the assemblies, and performing depository functions of reporting, returning, replacing, storing, and dispatching the stored assemblies are similar to the concepts of receiving, screening, and distributing email in Intellectual Ventures I LLC v. Symantec Corporation, 838 F.3d 1307, 1316–18 (Fed. Cir. 2016) (The court analogized the claims to “a corporate mailroom” that “receive[s] correspondence, keep[s] business rules defining actions to be taken regarding correspondence based on attributes of the correspondence, appl[ies] those business rules to correspondence, and take[s] certain actions based on the application of business rules” and that the “actions include gating the message for further review . . . and also releasing, deleting, returning, or forwarding the message.”), of collecting data, recognizing certain data within the collected data set, and storing that recognized data in memory in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Association, 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.”), and of affixing a generated barcode to a mail object, submitting the mail object to a mail carrier for delivery, and sending the mail object through the mail system in Appeal 2021-000173 Application 15/673,412 15 Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017) (“[E]ach step of the process is directed to the abstract process of communicating information about a mail object using a personalized marking.”). Accordingly, we conclude independent claim 1 recites a way of collecting parcels, submitting parcels for delivery, recognizing certain inconsistencies, and then handling and sending parcels through the mail system, which is a commercial or legal interaction (such as agreements in the form of contracts or legal obligations in the business of delivering mail) or managing personal behavior or relationships or interactions between people (such as preparing mail for delivery or following instructions regarding mail delivery), which are certain methods of organizing human activity as identified in the Guidance, and thus an abstract idea. Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, in determining whether the claim is directed to this abstract idea, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Integration into a Practical Application We look to whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception,” i.e., “integrates a judicial exception into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP § 2106.04(d). Here, the only additional element recited in claim 1, i.e., elements beyond the abstract idea, is “storing the first assemblies by Appeal 2021-000173 Application 15/673,412 16 automated loading/unloading equipment in a transportable container having machine-readable RFID or 1D/2D barcode identifiers”— an element that, as the Examiner observes, is “recited at a high level of generality, and amount[s] to insignificant extra-solution activities associated with the judicial exception” and “generally links the use of the judicial exception to a technological environment and/or field of use.” Final Act. 23 (emphases omitted). We agree with the Examiner. As is clear from the Specification, there is no indication that the steps recited in claim 1 require any machinery used beyond its ordinary capacity. See Spec. ¶ 30 (Parcels are transferred to a storage unit and “stored and preserved in a shelf compartment or in a transportable container that is compatible with automated loading/unloading equipment and provided with machine-readable identifiers (e.g. RFID tags, 1D/2D barcodes, etc.”). However, use of machinery “in its ordinary capacity for economic or other tasks” does not “integrate a judicial exception into a practical application or provide significantly more.” MPEP § 2106.05(f)(2). See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court and [the Federal Circuit] have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.”). Appellant argues that claims “may recite improvements not only in computers, but also in ‘other technology or technical field’ (e.g., in the technical fields ‘Class 258: Railway mail delivery’ and ‘Class 12: Transportation’ of the Appellant’s application).” Appeal Br. 10 (emphases omitted). However, Appellant does not provide adequate reasoning or evidence showing, and we do not see from the claim, how the limitations of Appeal 2021-000173 Application 15/673,412 17 claim 1 recite an improvement to the proffered technical fields. Instead, we agree with the Examiner that “the claims are more directed towards solving a business problem (i.e. how to distribute documents / parcels from a sender to recipients after an event) that is only tangentially associated with technology elements (e.g. loading / unloading equipment, RFID / [barcodes]), rather than solving a technology based problem.” Ans. 13. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that claims are directed to “the abstract idea of offer-based price optimization”); Enfish, 822 F.3d at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). See also Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 893 (Fed. Cir. 2019) (“The ability to run a more efficient advertising campaign, even if novel, and even if aided by conventional computers, is an advance ‘entirely in the realm of abstract ideas,’ which we have repeatedly held to be ineligible.”). Thus, we are not persuaded of error in the Examiner’s determination that the additional elements of claim 1 do not integrate the judicial exception into a practical application, as the term is used in USPTO Guidance, and we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework Under the second step in the Alice framework and USTPO Guidance Step 2B, we “[e]valuat[e] additional elements to determine whether they amount to an inventive concept [which] requires considering them both Appeal 2021-000173 Application 15/673,412 18 individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” MPEP § 2106.05(I). As discussed above, there is no indication here that the steps, recited in independent claim 1, require any specialized machinery or inventive computer components — the Specification indicates just the opposite. See, e.g., Spec. ¶¶ 30, 45–47. Here, the only claim element in independent claim 1 beyond the abstract idea is related to “storing the first assemblies by automated loading/unloading equipment in a transportable container having machine-readable RFID or 1D/2D barcode identifiers” i.e., generic componentry, operating in its routine and ordinary capacity to store and load/unload assemblies. Appellant acknowledges that one of ordinary skill would have been “aware without recitation of multiple machines used for delivery of mail (sorting, stamping, and labeling machines, cars, trucks, trains, aircraft, etc.).” Appeal Br. 10 (emphases omitted). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps comprises only ‘conventional steps, specified at a high level of generality,’ which is insufficient to supply an ‘inventive concept.’” (citing Alice, 573 U.S. at 222)); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (determining that there was “no ‘inventive concept’ that transform[ed] the abstract idea of collecting, displaying, and manipulating XML data into a patent-eligible application of that abstract idea”); OIP Techs., 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well-understood, routine conventional activit[ies],’ either by requiring Appeal 2021-000173 Application 15/673,412 19 conventional computer activities or routine data-gathering steps” (alteration in original)). Appellant last argues that the first assemblies and parcels and other tangible objects of claim 1 “cannot feasibly be assembled, provided, stored, dispatched or otherwise mechanically processed/handled/transported using any ‘mental processes.’” Appeal Br. 7 (emphases omitted). However, we agree with the Examiner that Appellant has mischaracterized the rejections of record and that “reciting tangible items such as the assemblies / parcels in claims 1 and 16 is not sufficient to show eligibility.” Ans. 8–9 (citing MPEP § 2106(I)). See In re TLI Commc’ns Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea.”). Viewed as a whole, independent claim 1 simply recites a series of steps for dispatching pre-scheduled mail by collecting parcels, submitting parcels for delivery, recognizing certain inconsistencies, and then handling and sending parcels through the mail system. See Ultramercial, 772 F.3d at 716 (“[T]he claimed sequence of steps comprises only ‘conventional steps, specified at a high level of generality,’ which is insufficient to supply an ‘inventive concept.’” (citing Alice, 573 U.S. at 222)). Here, independent claim 1 does not, for example, effect an improvement in any other technology or technical field, as discussed above with respect to Prong Two of Step 2A. Instead, independent claim 1 amounts to nothing significantly more than an instruction to apply the abstract idea using generic machine elements, which, under our precedents, is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. Appeal 2021-000173 Application 15/673,412 20 We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of independent claim 1, and claims 4, 5, 16– 18, which fall with independent claim 1. 35 U.S.C. § 103 Independent claims 1 and 16, and dependent claims 4, 5, 17, and 18 We are not persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1 and 16 under 35 U.S.C. § 103 because the combination of Vandervort, Address Validator, Address Validation FAQ, Kasahara, and Lert fails to disclose or suggest limitations [b], [c1], and [c3] of independent claim 1, and similarly recited by independent claim 16. Appeal Br. 10–14. Instead, we agree with, and adopt, the Examiner’s findings and rationales as our own (see Final Act. 29– 33; Ans. 13–24). We add the following discussion for emphases. Vandervort is directed to a system that controls “the distribution of pre-prepared greeting cards and messages to friends and family so that the delivery of such greeting cards occurs at pre-selected times after death of the greeting card sender.” Vandervort ¶ 2. Vandervort describes that a sender “places each greeting card in an envelope, seals the envelope,” and “completes a legacy data sheet for each recipient which includes at least the name of each recipient, the date of birth of each recipient, and the last known address of the recipient as well as send date instructions.” Id. ¶ 4; see also id. ¶ 13 (“Alternatively, the sender may print the mailing address for the recipient on the envelope 6 with instructions to the trustee to verify that the address remains accurate prior to mailing.”). Vandervort further Appeal 2021-000173 Application 15/673,412 21 describes that “[t]he completed enveloped cards and legacy data sheets are collected in a sender package and given to the greeting card trustee,” and that upon receipt of a passing notification postcard, “the greeting card trustee commences sending cards to recipients.” Id. ¶ 4. Address Validator is a screen shot of a UPS webpage directed to validating an address. Address Validator, 1. More particularly, Address Validator, discloses that “[v]alidating a shipping address helps ensure prompt and accurate delivery of your shipment.” Id. Address Validator requires that a user enter required address information. Id. For example, Address Validator provides a webpage with fields for data entry related to an “Address,” a “Street,” a “Suite/Room/Floor,” a “City,” a “State,” and a “Postal Code.” Id. Address Validation FAQ is a screen shot of webpage that is also directed to address validation, i.e., “UPS Address Validation compares an address to a standard database of address possibilities. A successful validation attempt indicates that the address information you provided exists in the database.” Address Validation FAQ, 1. Address Validation FAQ also describes that a user would want to use the “UPS Address Validation” service in order to “confirm[] that the address you enter is recognizable by our shipping and delivery systems, thereby helping to ensure the prompt and accurate delivery of your shipment.” Id. at 2. Kasahara is directed to a system for “reserving a service of an event that can possibly occur in the future.” Kasahara ¶ 2. Kasahara describes that “user 10 carries an object to be transmitted to a recipient to the service center 11 at some future date after specifying the contents of an event” (id. ¶ 24) and that an “object to be transmitted to the recipient 13 when the user Appeal 2021-000173 Application 15/673,412 22 10 receives the service include a variety of items such as a letter, a commodity, an electronic document, cash, etc.” Id. ¶ 23. Kasahara discloses “[w]arehouse, etc. 14 is a location in which a medium received from a requester is held after the service center 11 accepts a request.” Id. ¶ 27. Kasahara’s system includes a “request modification process” in which “if a medium (object to be transmitted), especially, actual stuff to be transmitted is changed, the user must actually goes [sic] to the post office and replaces [sic] the medium in addition to an operation for modifying the record.” Id. ¶¶ 55, 56. Lert is directed to storage handling systems, and more particularly to “transports for automated storage and retrieval systems.” Lert ¶ 4. Lert discloses that a storage and retrieval system “may include in-feed and out- feed transfer stations 170, 160, multilevel vertical conveyors 150A, 150B, a storage structure 130, and a number of autonomous vehicular transport robots 110 (referred to herein as ‘bots’).” Id. ¶ 23. Lert describes that bar code scanners “may be mounted on the bot” and “may also be configured to read bar codes located on items stored in the shelves 600.” Id. ¶ 52. Lert further describes that “a location of a predetermined storage location and an appropriately sized case unit or case units for placement in the predetermined storage location” may be communicated and “[t]hat case unit may be transferred into the storage and retrieval system 100 where a bot 110 delivers the case unit to the predetermined storage location.” Id. ¶ 77. Rocket Lawyer is a webpage discussing letters of testamentary. Rocket Lawyer, 1. For example, Rocket Lawyer describes that a letter of testamentary “is a document granted by a local court” that allows an individual to establish that they are “legally allowed to act as the executor Appeal 2021-000173 Application 15/673,412 23 for an estate.” Id. More particularly, Rocket Lawyer discloses that “[g]enerally, a Letter of Testamentary, along with a legally binding death certificate, are the two documents you’ll need to do the real estate transactions, banking, and asset distribution you were appointed to do.” Id. Appellant first asserts that Vandervort “contradicts” and “teach[es] away from the methods of [c]laims 1 and 16.” Appeal Br. 11. According to Appellant, the methods “become inoperable if [c]onditions 1–3 of Vandervort are applied” and “do not teach any timing relationship between a sender and recipient of first assemblies of mail ([c]laim 1) and parcels of mail ([c]laim 16) and are inoperable if such relationship exists” and “teach dispatching first assemblies of mail ([c]laim 1) and parcels of mail ([c]laim 16) on a receipt (i.e. sending always and with no delay/‘lag time’) of a notice of occurrence of a pre-determined event.” Id. at 11–12 (emphases omitted) We disagree with Appellant. Instead, we agree with the Examiner that Appellant’s characterization that the features in Vandervort including a sender specifying a timing relationship and specified lag time as both being required is not correct. Both the timing condition and lag time condition are optional because Vandervort includes the functional embodiment of receiving the notice of passing (event) and then dispatching per the instructions. Ans. 15 (citing Vandervort ¶¶ 4, 14, 16). As pointed out by the Examiner, Vandervort does not teach away from the claimed invention; but instead, “merely illustrates additional and different ways of behaving than in the Appellant’s claimed invention.” Id. We also agree with the Examiner that “there is nothing specified in Vandervort that would have deterred or warned one of ordinary skill in the art from pursuing modifications” based on Appeal 2021-000173 Application 15/673,412 24 Vandervort. Id. at 15–16. In this regard, we note that the conditions described in Vandervort are consistent with Appellant’s sender instructions. See Spec. ¶¶ 16, 17, 41, 44. Appellant next asserts that “Kasahara . . . teach[es] away from and is technologically/functionally incompatible with both Vandervort (method for posthumous mailing of greeting cards) and methods of [c]laims 1 and 16” and, more specifically, is “technically and functionally incompatible with the mail operations (i.e., Mechanical Arts operations).” Appeal Br. 12 (emphases omitted). However, other than simply asserting that Kasahara is incompatible with Vandervort, Appellant does not explain, and we do not see why, the proposed combination would be “technologically/functionally incompatible.” At the outset, we agree with the Examiner that there is nothing in claim language of claims 1 and 16 preclude the Appellant’s invention from also including additional functionality such as the additional hardware and/or technical features (e.g. server, request master, storage location master, purchased commodity master of the service center, people information master of the electronic government, Internet- coupled computer networking devices) of Kasahara argued by the Appellant. Ans. 16–17. As the Examiner points out, “Kasahara is relied upon to teach a depository that handles returning, replacing and storing the first assemblies / parcels.” Ans. 16 (citing Kasahara Figs. 3B, 5B, 5D and ¶¶ 27, 48–52, 55, 56). See Final Act. 32. We agree with the Examiner that Kasahara “teaches dispatching the stored first assemblies / parcels on a receipt of a notice of occurrence of a pre-determined event.” Ans. 16 (citing Kasahara ¶¶ 9, 26, 30). We also agree with the Examiner that “Vandervort and Kasahara are Appeal 2021-000173 Application 15/673,412 25 analogous inventions in the field of posthumous event-driven delivery, and both involve mail-based operations to distribute assemblies and parcels to recipients after pre-determined events.” Id. Thus, Appellant’s arguments are not persuasive. Appellant further asserts that the combination of Vandervort, Kasahara, Address Validator, Address Validation FAQ, and Lert does not disclose or suggest the reproduced limitations [b], [c1], and [c3]. Appeal Br. 14. According to Appellant, the Examiner’s “rejections of Claims 1 and 16 have no merit and [are] directed to inoperable embodiments.” Id. However, in the absence of any specific, technical explanation to support Appellant’s arguments, we are not persuaded that the Examiner erred. Instead, we find that Vandervort discloses “[t]he completed enveloped cards and legacy data sheets are collected in a sender package and given to the greeting card trustee” as called for by limitation [b]. Vandervort ¶ 4; see also id. ¶¶ 17–18. We agree with the Examiner that Vandervort “details mailing the first assemblies / parcels using the postal system after receiving notice of passing / death notification at the appropriate designated time” (Ans. 17 (citing Vandervort ¶¶ 22–23)) and Kasahara “also teaches this limitation mailing printed letters when the event occurs,” referring to limitation [c3]. Id. at 20 (citing Kasahara ¶¶ 9, 26, 30). And, with respect to limitation [c1] of claim 1, we find that Address Validation FAQ describes examples in “Will using UPS Address Validation eliminate address corrections” that one of ordinary skill in the art would appreciate reporting whether there has been a mismatched name or address, and providing a “Proper UPS Address.” Address Validation FAQ, 1, 3 (emphases omitted). In addition, Kasahara discloses that a user “goes to the post office and Appeal 2021-000173 Application 15/673,412 26 replaces the medium” in a request modification. Kasahara ¶ 56. Thus, we agree with the Examiner that the combination of Vandervort, Kasahara, Address Validation FAQ, and Lert discloses or suggests the argued limitations. We are not persuaded on the present record that the Examiner erred in rejecting independent claims 1 and 16 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection. We also sustain the Examiner’s rejection of dependent claims 5 and 18, which are not argued separately. Instead, Appellant merely reproduces the language of dependent claims 5 and 18. Appeal Br. 14. However, the mere reproduction of a claim does not rise to the level of a substantive argument for patentability. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Dependent claims 4 and 17 Appellant argues that the Examiner “erred in [their] interpretation of the content of Letter of Testamentary and that this reference is unrelated to the subject matter and limitations of [c]laims 1 and 16” or the limitation “the notice is a judicial decision” recited in claims 4 and 17. Appeal Br. 15. The Examiner takes the position that the “broadest reasonable interpretation [is] that judicial decisions are court-granted documents and decisions” (Ans. 21) and it is reasonable to interpret a “Letter [of] Testamentary as a judicial decision because it is a notice that is produced by Appeal 2021-000173 Application 15/673,412 27 the courts.” Id. The Examiner also notes that Appellant’s Specification “does not provide any specific details regarding what is a ‘judicial decision.’” Id. (citing Spec. ¶ 32). We agree with the Examiner. In making this determination we note that Rocket Lawyer describes that a Letter of Testamentary is a document granted by a local court that is “need[ed] to do the real estate transactions, banking, and asset distribution you were appointed to do.” Rocket Lawyer, 1. Thus, one of ordinary skill in the art would recognize a letter of testamentary to be “a judicial decision,” and relevant to the subject matter of posthumous distribution of assemblies or parcels as in the combination of Vandervort, Address Validator, Address Validation FAQ, Kasahara, and Lert. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (Even when prior art is not in the same field of endeavor as the claimed invention, it is still analogous prior art if it is “reasonably pertinent” to the particular problem with which the inventor is involved); In view of the foregoing, we sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of dependent claims 4 and 17. Alternative rejections of claims 16–18 We do not reach the additional obviousness rejections of claims 16 and 18 rejected as being unpatentable over Kasahara, UPS (Address Validator and Address Validation FAQ), and Lert (Final Act. 38–41) and claim 17 as being unpatentable over Kasahara, UPS (Address Validator and Address Validation FAQ), Lert, and Rocket Lawyer. Id. at 41–42. Our affirmance of the rejections of claims 1, 5, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Vandervort, UPS (Address Validator, Address Validation FAQ), Kasahara, and Lert, and claims 4 and 17 under 35 U.S.C. Appeal 2021-000173 Application 15/673,412 28 § 103(a) as unpatentable over Vandervort, UPS (Address Validator, Address Validation FAQ), Kasahara, Lert, and Rocket Lawyer renders it unnecessary to reach the additional rejections of claims 16–18. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (affirming anticipation rejection of claims and not reaching additional obviousness rejections). As such, we will not discuss the merits of the Examiner’s rejection of the same claims based on different references. Appeal 2021-000173 Application 15/673,412 29 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 16– 18 112(b) Indefiniteness 1, 4, 5, 16– 18 1, 4, 5, 16– 18 101 Eligibility 1, 4, 5, 16– 18 1, 5, 16, 18 103 Vandervort, UPS (Address Validator, Address Validation FAQ), Kasahara, Lert 1, 5, 16, 18 4, 17 103 Vandervort, UPS (Address Validator, Address Validation FAQ), Kasahara, Lert, Rocket Lawyer 4, 17 16, 18 1038 Kasahara, UPS (Address Validator, Address Validation FAQ), Lert 17 1039 Kasahara UPS (Address Validator, Address Validation FAQ), Lert, Rocket Lawyer Overall Outcome 1, 4, 5, 16– 18 8 As discussed above, we do not reach the additional obviousness rejection of claims 16 and 18. 9 As discussed above, we do not reach the additional obviousness rejection of claim 17. Appeal 2021-000173 Application 15/673,412 30 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). AFFIRMED Copy with citationCopy as parenthetical citation