Ex Parte Gullo et al

Patent Trial and Appeal Board

Sep 10, 2018

13966436 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/966,436 08/14/2013 John F. Gullo
22852 7590 09/12/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08049. 0924-02 5542
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. GULLO, WAYNE A WILKERSON, ROY R. GORDON,
and DAN LORD
Appeal2017-007207
Application 13/966,436 1
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 28, 30, 31, 33-35, and 45-58. Appellants have canceled claims 1-
27, 29, 32, and 36-44. App. Br. 21-22. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the United States Postal Service as the real party in
interest. App. Br. 3.
Appeal2017-007207
Application 13/966,436
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to using
a "uniquely designed postage indicia for a shipping label" to, according to
the Specification, prevent fraud, misuse, abuse, and reuse of postage. Spec.
,r 2. In a disclosed embodiment, a user (i.e., sender) may connect over the
network to a website to purchase an estimated amount of postage necessary
to ship a package or mailpiece. Spec. ,r 22. After the estimated amount has
been paid, the website produces postage indicia "by producing a machine-
readable representation of information associated with the mailpiece
("postage information"). Spec. ,r,r 24--25. Exemplary postage information
may include the postage paid, the sending zip code, a destination zip code, a
delivery confirmation code, or a unique postage number as an identification
of the mailpiece. Spec. ,r 25. Figure 2 is illustrative of an embodiment of
the postage indicia and is reproduced below:
204
PAID
ONLINE
106
202
Mailed from 20260
F1gure 2
2
, .. /
2l0
,,
,,•""
208
/'/
/"
Appeal2017-007207
Application 13/966,436
Figure 2 shows an example of a stealth (i.e., the postage amount is
represented only in machine-readable form) postage indicia. Spec. ,r,r 11,
28. The Specification further describes that after the mailpiece has been
delivered into the mail stream, the mailing system may scan the postal
indicia to verify the correct amount of postage has been paid and to verify
that the indicia has not been improperly duplicated. Spec. ,r 32. Further,
[ o ]nee the delivery confirmation number barcode and postage
number are scanned (block 804 ), the shipper can then verify
( decision 806), against its database, that the postage label is being
used with the mail piece for which it was intended. If a match is
not determined, then the use of the postage label on the present
mailpiece is unauthorized, and the mailpiece is not delivered
(block 808).
Spec. ,r 35.
Claim 51 is representative of the claimed subject matter on appeal and
is reproduced below:
51. A method for preventing postage fraud comprising:
receiving a user request for purchasing postage;
transmitting, in response to the user request, a postage
indicia to the user, the postage indicia including a unique postage
number and a unique parcel number different from the unique
postage number;
updating a database with a record of the postage indicia;
receiving a mailpiece having the postage indicia;
scanning, using a scanner, the unique parcel number and
the unique postage number from the postage indicia on the mail
piece;
determining, using a processor, whether the unique parcel
number is stored in association with the unique postage number
in a database; and
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Application 13/966,436
indicating to a shipper that the mailpiece may be delivered
when it is determined that the unique parcel number is associated
with the unique postage number.
The Examiner's Rejection
Claims 28, 30, 31, 33-35, and 45-58 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 8-9.
ANALYSIS 2
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 9-20; Reply Br. 2-
10. In particular, Appellants argue the abstract idea to which the claims
allegedly are directed has not been articulated clearly, but rather, is
paraphrased claim language. App. Br. 9-10; Reply Br. 2. Appellants
contend the claims are not directed to an idea of itself and "do not recite any
features that constitute ... [abstract] financial or contractual transactions or
obligations between parties." App. Br. 10-12; Reply Br. 3--4. Additionally,
Appellants assert the claims recite more than well-understood, routine, and
conventional activities known in the mail delivery industry to solve a
technological problem (i.e., postage fraud) within the conventional industry
practice. App. Br. 17-20; Reply Br. 5, 9-10.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int 'l,
2 Throughout this Decision, we have considered the Appeal Brief, filed
January 23, 2017 ("App. Br."); the Reply Brief, filed April 5, 2017 ("Reply
Br."); the Examiner's Answer, mailed February 28, 2017 ("Ans."); and the
Final Office Action, mailed July 15, 2016 ("Final Act."), from which this
Appeal is taken.
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Application 13/966,436
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 8.
Further, the Examiner concludes the claims do not recite significantly more
than the abstract idea itself. Final Act. 9. Accordingly, the Examiner
concludes the claims are not directed to patent-eligible subject matter. Final
Act. 8-9.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
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inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information ( e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353-54 ("analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category"). Further,
"creating an index and using that index to search for and retrieve data" is an
abstract idea. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1327 (Fed. Cir. 2017). Also, our reviewing court has concluded that
"communicating information about a mail object using a personalized
marking" is an abstract idea. Secured Mail Solutions LLC v. Universal
Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F .3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas).
Here, Appellants' claims are directed to determining whether
information contained in postage indicia affixed to a mailpiece to be
delivered is present in a database. This is consistent with Appellants'
description of the claims. App. Br. 11 ("These claimed features recite
operations related to reading specific information from a label on a
mailpiece, and determining whether or not the mailpiece may be delivered
by a shipper based on that information."). Upon the purchase of postage
indicia, the postage is transmitted to the purchasing user and a database is
updated with a record associated with the postage indicia. The postage
indicia may be affixed to a mailpiece and read by a scanner to retrieve
unique parcel and postage numbers. It is determined whether the retrieved
parcel number is stored in association with the postage number in the
database. If so, an indication that the mailpiece may be delivered is
provided to a shipper.
Like the purchasing of a stamp, the claimed transmitting of postage
indicia to a user after the user purchases the postage indicia is a fundamental
economic practice long prevalent in society. See Alice, 134 S. Ct. at 2356;
see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (concluding that creating a contractual relationship "is beyond
question of ancient lineage"); 39 U.S.C. § 404 (providing specific powers of
the Postal Service). Further, the reading of data present in the postage
indicia is similar to the abstract idea of collecting and analyzing data. See
Content Extraction, 776 F.3d at 1347; Elec. Power, 830 F.3d at 1353.
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Similarly, as stated above, "communicating information about a mail object
using a personalized marking" is an abstract idea. Secured Mail Solutions,
873 F.3d at 911. Also, entering or retrieving data from a database is similar
to the abstract idea of searching a database using an index (i.e., an index is
associated with other data). See Intellectual Ventures, 850 F.3d at 1327.
The comparing of collected data to retrieved data (i.e., data read from
postage indicia compared to data retrieved from the database) is similar to
the abstract idea of collecting and comparing data. See Content Extraction,
776 F.3d at 1347; Elec. Power, 830 F.3d at 1353; see also Berkheimer v. HP
Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (concluding "parsing, comparing,
storing, and editing data" are abstract ideas). Accordingly, we conclude the
character as a whole of the claims is directed to an abstract idea, as identified
hereinabove.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we proceed to analyzing the claims under step
two of Alice to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to "significantly
more" than the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73, 78-79
(2012)). The implementation of the abstract idea involved must be "more
than [the] performance of 'well-understood, routine, [and] conventional
activities previously known to the industry."' Content Extraction, 77 6 F .3d
at 1347--48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original).
"Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination."
Berkheimer, 881 F.3d at 1369.
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Contrary to Appellants' assertions, the Examiner finds the claims
require no more than a generic computer functions or elements performing
well-understood, routine, and conventional generic computer functions.
Final Act. 9; Ans. 16-17. As Appellants' acknowledge in the Background
section of the Specification, purchasing postage over the internet using a
computer whereby a label (i.e., postage indicia) could be printed and affixed
to a mail piece was known and in practice at the time of Appellants' claimed
invention. See Spec. ,r 4. Additionally, the claimed processor, interface, and
database do not otherwise transform the abstract idea into a patent-eligible
application. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324--25 (generic computer components such as an
"interface," "network," and "database," fail to satisfy the inventive concept
requirement); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1368 (Fed. Cir. 2016 (a "database" and "a communication
medium" "are all generic computer elements"); buySAFE v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) ( "That a computer receives and sends
the information over a network-with no further specification-is not even
arguably inventive."). "[A] claim directed to an abstract idea does not move
into § 101 eligibility territory by merely requiring generic computer
implementation." buySAFE, 765 F.3d at 1354 (quoting Alice, 134 S. Ct. at
2357) (internal quotation omitted). Further, the claims do not recite
improving any of the computer technology or, contrary to Appellants'
arguments (see, e.g., App. Br. 19), solve a technological problem in
conventional industry practice. Rather, the claims make a determination that
the postage indicia is valid and provide an indication to the shipper that
delivery of the mail piece may proceed. As Appellants acknowledge in the
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Background of the Specification, the Postal Service would already determine
whether the postage amount was appropriate (i.e., valid) and, if so, deliver
the mailpiece. Spec. ,r 5. If the postage amount were not sufficient, the
mailpiece would be returned to the sender (i.e., not delivered). Spec. ,r 5.
Further, to the extent Appellants are asserting a lack of rejection
under Sections 102 and/or 103 suggests the instant claims do not recite well
understood, routine, or conventional activities or, otherwise, recite an
inventive concept (see, e.g., App. Br. 14--15; Reply Br. 9-10), we are not
persuaded. Subject-matter eligibility under 35 U.S.C. § 101 is a requirement
separate from other patentability inquiries. See Mayo, 566 U.S. at 90
(recognizing that the§ 101 inquiry and other patentability inquiries "might
sometimes overlap," but that "shift[ing] the patent-eligibility inquiry entirely
to these [other] sections risks creating significantly greater legal uncertainty,
while assuming that those sections can do work that they are not equipped to
do"); see also Diamond v. Diehr, 450 U.S. at 188-89 ("[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter"); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017)
("[ e ]ligibility and novelty are separate inquiries").
Additionally, to the extent Appellants contend the claims are not
preemptive of the field of "preventing postage fraud" (see App. Br. 15-17;
Reply Br. 7-8), we are unpersuaded of Examiner error. "' [W]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility."' Fair Warning
IP, 839 F .3d at 1098 ( quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
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788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 51 under 35 U.S.C. § 101. For similar reasons, we sustain the
Examiner's rejection of independent claim 28, which recites similar
limitations and was not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2016). Additionally, we sustain the Examiner's rejection of claims 30, 31,
33-35, 45-50, and 52-58, which depend directly or indirectly therefrom.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
DECISION
We affirm the Examiner's decision rejecting claims 28, 30, 31, 33-35,
and 45-58 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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