Alexander Lantsman

Patent Trials and Appeals Board

Jun 11, 2021

2021000173 (P.T.A.B. Jun. 11, 2021)

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.
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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.).
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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.
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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).
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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.”).

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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
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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.
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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
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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).
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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
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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,
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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
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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.
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[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
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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
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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
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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
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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
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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.
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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
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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
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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
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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
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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
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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
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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
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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.
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§ 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.
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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.
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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