Boris Paul et al.

Patent Trials and Appeals Board

Dec 3, 2019

13702869 - (D) (P.T.A.B. Dec. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/702,869 12/07/2012 Boris Paul 11852-PT-WO-US 9022
69590 7590 12/03/2019
International IP Law Group
P.O. BOX 691927
HOUSTON, TX 77269-1927
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/03/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
barry.blount@iiplg.com
docketing@iiplg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte BORIS PAUL, VERENA WILD, THOMAS SCHULTE-HILEN,
and KEITH ULRICH
________________

Appeal 2018-003811
Application 13/702,869
Technology Center 3600
________________

Before JENNIFER L. McKEOWN, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 16–31.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to optimizing collection trips and/or delivery
trips of a courier service. Abstract. Claim 16 is illustrative of the invention
and is reproduced below with emphases:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Deutsche Post AG is the real
party in interest. Appeal Br. 2.
2 According to the claims filed on May 26, 2016, claims 1–15 are indicated
as cancelled.
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16. A system for optimizing collection journeys and
delivery journeys of a courier service, comprising:
a computer system having a database for storing address
data records and for providing the address data records for a
navigation system that can at least be read in at least one of the
courier vehicles of the courier service;
a display screen connected to the computer system for
displaying navigation information comprising a street map, a
satellite image or an image from bird’s eye view of the
surroundings of a destination address;
an input system connected to the computer system for
entering at least one additional information on at least one
address data record, the computer system being configured to
allow insertion of the additional information into the at least one
address data record; and
the system being configured to use, after display of
surroundings of a destination address, a cursor to be able to mark
a selection area around the destination address on the display
screen, to display all other destination addresses in the marked
area, and to use a cursor to be able to mark a common approach
point for the displayed destination addresses on the display
screen, with a geo-coordinate of the approach point deviating
from the geo-coordinates of the destination addresses in the
selection area, where for all destination addresses in the marked
area, the geo-coordinate of the approach point is inserted as
additional information into address data records of each of the
destination addresses as the approach destination, where in case
of subsequent courier journeys to one of said addresses, the
system will specify the defined approach point for the destination
addresses to courier drivers in the display screen.

Appeal Br. 24 (Claims Appendix) (emphases added).

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REJECTIONS
Claims 25–313 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 7–8.
Claims 16–31 stand rejected under 35 U.S.C. § 101 as being directed
to patent ineligible subject matter. Final Act. 8–9.
Claims 16–18, 20–27, 30, and 31 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Levis (US 2006/0235739 A1;
published Oct. 19, 2006), Stringham (US 2005/0004705 A1; published Jan.
6, 2005), and Graham (US 2008/0255758 A1; published Oct. 16, 2008).
Final Act. 10–19.
Claims 19, 28, and 29 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Levis, Stringham, Graham, and
Bevacqua (US 2009/0309709 A1; published Dec. 17, 2009). Final Act. 19–
23.
ANALYSIS
I. Claims 25–31 Rejected Under 35 U.S.C. § 112, second paragraph
The Examiner finds claim 25 (and similarly recited claim 31) recites
the limitation “assigning the geo-coordinate of the approach point deviating
from the geo-coordinates of the destination addresses . . . in a way . . . the
geo-coordinate of the approach point is inserted as additional information
into the address data records” (emphasis added) without defining “in a way.”

3 The Examiner rejects claims 25 and 31 under 35 U.S.C. § 112, second
paragraph. Final Act. 7–8. However, because claims 26–30 depend from
claim 25, these dependent claims should be included in the rejection. We
interpret the omission of claims 26–30 being rejected under 35 U.S.C. § 112,
second paragraph as a typographical error. We, therefore, interpret claims
25–31 as being rejected under 35 U.S.C. § 112, second paragraph.
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Final Act. 7–8. Moreover, the Examiner finds the Specification discusses
“in a way” too broadly. Ans. 3–4. The Examiner concludes, therefore, that
these claims are indefinite. Final Act. 7–8.
Appellant argues claims 25 and 31 are not indefinite merely because
they include broad terms, and that the disputed term is definite. Appeal Br.
7–9; Reply Br. 2 (citing Spec. ¶ 7).4 We agree with Appellant.
We interpret claims 25 and 31 as broadly and sufficiently claiming “in
a way” to meet the threshold requirement of 35 U.S.C. § 112, second
paragraph. In addition, paragraph 7 of the Specification provides examples
of inserting additional data into address data records. Spec. ¶ 7.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 25 and 31; and (2) dependent claims 26–30 under
35 U.S.C. § 112, second paragraph.
II. Claims 25–31 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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

4 Appellant characterizes the rejection under 35 U.S.C. § 112(b). Appeal Br.
7; Reply Br. 2. However, because of the filing date of Appellant’s
application, claims 25–31 should be rejected under 35 U.S.C. § 112, second
paragraph. We, therefore, interpret Appellant’s characterization as a
typographical error.
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are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
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said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite mental processes.
Ans. 8. The Examiner also finds the present claims do not amount to
significantly more than an abstract idea itself because the abstract idea is
implemented on generic components that are well-understood, routine,
conventional, and previously known to the industry. Final Act. 5.
Appellant argues, similar to DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), the present claims are necessarily rooted in
technology to solve problems specifically arising in the realm of delivery
and collection journeys. Appeal Br. 14–15.5 We disagree with Appellant.

5 We need not address Appellant’s arguments pertaining to Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014), Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F.
App’x 988 (Fed. Cir. 2014), and Intellectual Ventures v. Capital One
Financial, 850 F.3d 1332 (Fed. Cir, 2017) (Reply Br. 3) because we do not
rely on these cases to reach our Decision.
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C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 16,6 reproduced above (see supra at
2), recite concepts performed in the human mind because they recite
concepts that could be performed using paper and pencil. For example,
“displaying navigation information comprising a street map,” as recited in
claim 16, could be performed using a paper and pencil. According to the
Memorandum, concepts performed in the human mind fall into the category
of mental processes. See Memorandum. Moreover, those mental processes
are a type of an abstract idea. See id.
Because the present claims recite concepts performed in the human
mind, which fall into the category of mental processes (i.e., an abstract idea),
we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. Appellant argues that, similar to DDR, the present claims
are necessarily rooted in technology to solve problems specifically arising in
the realm of delivery and collection journeys. Appeal Br. 14–15. Instead,
the present claims are directed to an abstract idea using additional generic
elements as tools to implement the abstract idea as discussed supra in
§ II.C.1. or, at best, the present claims are rooted in delivery and collections

6 Claim 16, reproduced above with emphases, recites similar features as
claims 25 and 31. Appellant does not argue claims 17–31 separately.
Appeal Br. 10–16. We, therefore, group claims 16–31 together and refer to
these claims as the “present claims.”
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and overcoming a problem arising in that field.
The Specification indicates the additional elements (i.e., “computer
system,” “database,” “display screen,” “input system,” “cursor,”7
“navigation system,”8 “storing module,”9 “address module,” “receiving
module,” “insertion module,” “display module,” “selection module,”
“destination module,” “common approach module,” “assignment module,”
and “defined approach module”) merely are tools used to implement the
abstract idea. Spec. ¶¶ 5–22. Moreover, we conclude the limitations
“displaying navigation information comprising . . . a satellite image” and
“geo-coordinate” are extra-solution activities.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, the present claims amount to merely automating the
abstract idea discussed supra in § I.C.1. “Automation” or any increase in
processing speed in the claimed method (as compared to without using
computers) comes from the capabilities of the generic computer
components, and not the recited process itself. See FairWarning IP, LLC v.

7 Claims 15 and 25 recite this feature, whereas claim 31 does not.
8 Claims 25 and 31 recite this feature, whereas claim 15 does not.
9 The following “module” limitations are recited in claim 31, but not claims
15 and 25.
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Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer
‘do[ ] not materially alter the patent eligibility of the claimed subject
matter.’”).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
For reasons similar to those discussed above, we agree with the
Examiner’s finding that the abstract idea is implemented on generic
components that are well-understood, routine, and conventional. Final Act.
7 (citing Spec. 4:2–4, 5); Ans. 6. The Specification supports the Examiner’s
finding because it explains that “computer system,” “database,” “display
screen,” “input system,” “cursor,” “navigation system,” “storing module,”
“address module,” “receiving module,” “insertion module,” “display
module,” “selection module,” “destination module,” “common approach
module,” “assignment module,” and “defined approach module” recited in
the present claims are generic components. Spec. ¶¶ 5–22; see supra.
Appellant’s Specification indicates these elements were well-understood,
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routine, and conventional components because it describes them at a high
level of generality and in a manner that indicates that they are sufficiently
well-known. Id.
Appellant does not argue claims 17–31 separately, but asserts the
§ 101 rejection of those claims should be withdrawn for at least the same
reasons as argued for independent claim 16. Appeal Br. 10–16. Based on
our review of the remaining claims, these claims do not recite any additional
features that would transform the abstract idea recited in claim 16 into an
inventive concept. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claims 16, 25, and 31; and (2) dependent claims 17–24 and
26–30 under 35 U.S.C. § 101.
III. Claim 31 Rejected Under 35 U.S.C. § 101
The Examiner concludes claim 31 recites software per se. Final Act.
6, 9; Ans. 4.
Appellant does not contest this particular rejection. We, therefore,
summarily sustain the Examiner’s rejection of claim 31. See 37 C.F.R.
§ 41.39(a)(1).
IV. Claims 16–31 Rejected Under 35 U.S.C. § 103
The Examiner finds Stringham teaches a user using a cursor to select a
destination area for deliveries, wherein the system identifies destinations in
the area, the user can assign a route for the deliveries using the cursor, and
wherein the destinations are associated with the route beginning to end,
which the Examiner maps to “a geo-coordinate of the approach point
deviating from the geo-coordinates of the destination address in the selection
area being assigned to all destination addresses in the selection area” recited
in claim 16. Final Act. 12 (citing Stringham ¶¶ 26, 63–66); Ans. 10 (citing
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Stringham ¶ 64, Figs. 4–5). The Examiner finds Stringham fails to teach,
but Graham teaches setting and storing a reference point for deliveries to
addresses in an area such that future deliveries use the reference point as an
indicator of the delivery area and route deliveries to the reference point,
which the Examiner maps to the limitation “for all destinations addresses in
the marked area the geo-coordinate of the approach point is inserted as
additional information into address data records of each of the destination
addresses as the approach destination” recited in claim 16. Final Act. 13–14
(citing Graham ¶¶ 6, 56, 67–71, 88, 89, 104, 105); Ans. 11–12 (citing
Graham ¶¶ 71, 105).
Appellant argues Stringham merely relates to establishing a courier
route on a map when clicking on real houses and Graham teaches if a
delivery location is outside of a predefined zone of delivery, the delivery
will be noted as a mis-delivery. Appeal Br. 18–21 (citing Graham ¶¶ 55–56,
Figs. 2–3). Appellant further argues that Stringham and Graham fail to
teach the limitation
a geo-coordinate of the approach point deviating from the geo-
coordinates of the destination addresses in the selection area,
where for all destination addresses in the marked area, the geo-
coordinate of the approach point is inserted as additional
information into address data records of each of the destination
addresses as the approach destination, where in case of
subsequent courier journeys to one of said addresses
recited in claim 16. Appeal Br. 18–21. We agree with Appellant.
Claim 16 recites both (1) “deviating” and (2) “the geo-coordinates of
the approach point is inserted.” In particular, claim 16 requires a nexus
between: (1) the claim limitation “deviating”; and (2) a subsequent result of
“the geo-coordinates of the approach point is inserted as additional
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information into address data records of each destination addresses as the
approach destination.”
The Examiner relies on Graham (and does not rely on Levis or
Stringham) to teach the limitation “the geo-coordinate of the approach point
is inserted as additional information into address data records of each of the
destination addresses as the approach destination” (emphasis added) recited
in claim 16. Final Act. 12–14; Ans. 10–12. Graham, however, teaches the
opposite of inserting in response to is a deviation. Graham ¶¶ 55–56 (cited
at Appeal Br. 20). That is, Graham teaches if a delivery location is outside
of a predefined zone of delivery (i.e., a deviation), the delivery will be noted
as a mis-delivery. Graham ¶¶ 55–56.
Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 16, 25 and 31; and (2) dependent claims 17–24 and
26–30 under 35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
25–31 112, second
paragraph
Indefiniteness 25–31
16–31 101 Eligibility 16–31
16–18,
20–27, 30,
31
103 Levis,
Stringham,
Graham
16–18, 20–
27, 30, 31
19, 28, 29 103 Levis,
Stringham,
Graham,
Bevacqua
19, 28, 29
Overall
Outcome
16–31

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED