Ex Parte Stowe

Patent Trial and Appeal Board

Nov 7, 2018

14801468 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/801,468 07/16/2015 Robert Stowe
143177 7590 11/09/2018
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
IPP201538780 6885
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT STOWE
Appeal2017-007673 1
Application 14/801,4682
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
December 8, 2016) and Reply Brief ("Reply Br.," filed April 26, 2017), and
the Examiner's Answer ("Ans.," mailed February 27, 2017) and Final Office
Action ("Final Act.," mailed July 15, 2016).
2 Appellant identifies United Parcel Service of America, Inc. as the real
party in interest. App. Br. 2.
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Application 14/801,468
CLAIMED INVENTION
Appellant's claimed invention relates to "methods of aggregating
multiple parcels intended for delivery at a location into a minimum number
of deliveries at that location" (Spec. ,r 2).
Claims 1, 5, 9, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
receiving, via one or more computer processors, first
electronic shipment information for a first shipment en route to
be delivered to a destination location, wherein (a) the first
shipment has departed a shipper location but has not been
delivered to the destination location, and (b) the first electronic
shipment information (i) identifies the destination location of the
first shipment, (ii) identifies an estimated delivery date for the
first shipment based at least in part on a first class of service
associated with the first shipment, and (iii) is stored in one or
more shipping databases;
receiving, via the one or more computer processors,
second electronic shipment information for a second shipment en
route to be delivered to the destination location, wherein (a) the
second shipment has departed a shipper location but has not been
delivered to the destination location, and (b) the second
electronic shipment information (i) identifies the destination
location of the second shipment, (ii) identifies an estimated
delivery date for the second shipment based at least in part on a
second class of service associated with the second shipment, and
(iii) is stored in the one or more shipping databases;
determining, via the one or more computer processors and
based at least in part on the first electronic shipment information
and the second electronic shipment information, whether
delivery of the first shipment and delivery of the second shipment
to the destination location can occur concurrently by modifying
the first class of service for the first shipment;
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responsive to determining that delivery of the first
shipment and delivery of the second shipment can occur
concurrently by modifying the first class of service for the first
shipment:
modifying, via the one or more computer
processors, the first electronic shipment information for
the first shipment to change the first class of service to
effect concurrent delivery of the first shipment
concurrently with the second shipment at the destination
location, and
flagging (a) the first electronic shipment
information and (b) the second electronic shipment
information to indicate the first shipment and the second
shipment are aggregated for a concurrent delivery, the
flagging comprising a code corresponding to the number
of shipments aggregated in the concurrent delivery.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "aggregating the delivery of multiple parcels
to a location," which the Examiner determined is "a fundamental economic
practice and merely the automation of human activity," and, therefore, an
abstract idea (Final Act. 5). The Examiner also determined that the claims
do not include additional elements that are sufficient to amount to
significantly more than the abstract idea itself (id.). In this regard, the
Examiner determined that the only additional elements in the claims, beyond
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the abstract idea, are the one or more computer processors, i.e., generic
computer components, which are not enough to transform a patent-ineligible
abstract idea into a patent-eligible invention (id.).
Appellant argues that the pending claims are not directed to methods
for combining shipments that may be performed manually by a human;
instead, according to Appellant, the claims recite computer-specific
methodologies for retrieving and modifying computer-stored, electronic
shipment information for a plurality of shipments to flag those shipments as
aggregated for concurrent delivery (App. Br. 14). Substantially quoting the
language of independent claim 1, Appellant, thus, asserts that the "recited
features are not simply performable by a human, but are instead specifically
tailored to operate in a computer environment" (id. at 14--15).
Appellant appears to be arguing that any invention that cannot be
performed manually by a human, because the claim recites a computer is,
therefore, not abstract. Yet, a substantially similar argument was expressly
rejected by the Court in Alice. See Alice Corp., 134 S. Ct. at 2358 ("the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention"). Although "a method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101," CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not logically follow that
methods that arguably cannot be performed either entirely in the human
mind or manually, using pen and paper, are, therefore, not directed to
abstract ideas.
Moreover, we are not convinced here that there is no human analog
for the invention. Although claim 1, for example, recites the method is
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performed "via one or more computer processors," as the Examiner
observes, a human, e.g., a mail employee, could determine that two packages
are being shipped to the same address and then modify the mailing classes so
that the packages are delivered at the same time (Ans. 2).
Turning to step two of the Mayol Alice framework, Appellant argues
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claims recite significantly more than
the abstract idea itself (App. Br. 16). Appellant asserts that claims 1-20
provide improvements to computer database environments, used in the field
of shipment tracking and transportation, by identifying a plurality of
shipments that may be consolidated to provide concurrent delivery of the
same, and disseminating and storing updated shipping information for each
of these shipments to ensure the shipments are appropriately handled as they
are transported through a carrier's transportation network (id. at 17; see also
Reply Br. 7-8). Yet, Appellant does not explain how, and we fail to see
how, consolidating shipments for concurrent delivery somehow constitutes
an improvement in computer databases. We also find nothing from our
review of the Specification, nor does Appellant direct us to any portion of
the Specification, which attributes any improvement in computer databases
to the claimed invention.
It clearly appears from the Specification that the present invention is
intended to aggregate the delivery of multiple parcels intended for the same
location into a minimum number of deliveries at that location in order to
reduce the costs and inefficiencies associated with the delivery process (see,
e.g., Spec. ,r,r 2--4, 12). Considered in light of the Specification, the claimed
invention, thus, appears to be focused on addressing a business need, i.e.,
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"provid[ing] a customer-convenient, efficient and cost-effective means of
combining a plurality of parcels intended for delivery at a specific location
by a carrier into a minimum number of deliveries at that location" (id. i-fl2),
and not on any claimed means for accomplishing this goal that improves
technology.
We also cannot agree with Appellant that there is any parallel between
the present claims and the claims at issue in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App.
Br. 17-18; see also Reply Br. 8-9). There, the Federal Circuit held that the
second step of the Mayo/Alice framework was satisfied because the claimed
invention "represents a 'software-based invention[] that improve[s] the
performance of the computer system itself."' BASCOM, 827 F.3d at 1351
(stating that like DDR Holdings, where the patent "claimed a technical
solution to a problem unique to the Internet," the patent in BASCOM claimed
a "technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems ...
making it more dynamic and efficient") ( citations omitted).
Appellant ostensibly maintains here the claimed invention, like that in
BASCOM, provides a technical improvement (App. Br. 18). But we are not
persuaded that combining shipments to a common location to minimize the
number of deliveries to that location is a technological improvement, rather
than an improvement to a business practice.
Responding to the Examiner's Answer in the Reply Brief, and citing
Enfzsh, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir. 2016) and McRO,
Appellant asserts that the Federal Circuit has repeatedly held that software
configurations that enable a computer to perform a function not previously
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performable by a computer are patent-eligible (Reply Br. 4). Appellant,
thus, attempts to draw a parallel between the present claims and the claims
in Enfzsh and McRO. However, we do not agree that any such parallel
exists.
Appellant ostensibly maintains that the present claims, like the claims
in McRO, enable computing systems to perform functions not previously
performable by a computer (id. ("Appellant respectfully submits that the
present claims clearly enable computing systems to perform previously
impossible tasks, and accordingly Appellant submits that the claims are
directed to patentable subject matter."); see also App. Br. 15-16 (asserting
that, like the claims in McRO, the present claims use limited rules in a
process specifically designed to achieve an improved technological result)).
But, we are not persuaded that the present claims include "rules" that enable
the computer to aggregate shipments for concurrent delivery in the same
way the specific rules enabled the computer in McRO to generate the
computer animated characters. We also find no evidence of record here that
the present situation is like the one in McRO where computers were unable
to make certain subjective determinations, i.e., regarding morph weight and
phoneme timings, which could only be made prior to the claimed invention
by human animators.
The '576 patent, at issue in McRO, 3 describes that prior to the claimed
invention, character animation and lip synchronization were accomplished
by human animators, with the assistance of a computer, and involved the use
of a so-called "keyframe" approach in which animators set appropriate
3 U.S. Patent No. 6,307,576.
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parameters, i.e., morph weights, at certain important times, i.e., "keyframes,"
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription (a "timed transcript"). Id. In accordance with the prior
technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id.
In McRO, the improvement in computer animation was realized by
using "rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes" (id. at 1313), i.e., in McRO, the
invention used "rules to automatically set a keyframe at the correct point to
depict more realistic speech, achieving results similar to those previously
achieved manually by animators." Id. at 1307. The rules in McRO, thus,
allowed the computer to produce accurate and realistic synchronization in
animated characters that could only previously be produced by humans. We
are not persuaded that any comparable situation is presented here.
We also cannot agree with Appellant that the present claims, like
those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), are "specifically directed to concepts for solving a problem
arising exclusively in a computer-network environment" (Reply Br. 6-7).
Appellant asserts that the pending claims "explicitly recite features for
determining whether electronic shipping data indicates that corresponding
physical shipments are eligible for concurrent delivery"; that "the recited
computing components are required to undertake an additional substantive
analysis of the electronic shipment information for each of the plurality of
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shipments to determine whether various shipments are eligible for
concurrent delivery" because the electronic shipping data does not
necessarily indicate that shipments are originally scheduled for delivery on a
common delivery date; and that "the various steps of the analysis must be
configured to address the computational limitations of computing processors
for undertaking fuzzy logic algorithms to establish possible matches between
electronic shipment information records based on inexact informational
matches" (id. at 7). Appellant, thus, maintains that the present claims, like
those in DDR Holdings, "address computer-specific problems for
automatically identifying electronic shipment data indicative of potential
concurrent delivery shipment candidates," and are directed to patentable
subject matter under § 101 (id.).
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host's website after "clicking"
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
patent-eligible subject matter because they claim a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
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We are not persuaded here that determining whether various
shipments are eligible for concurrent delivery is a problem particular to, or
arising from, computer networks and/ or the Internet. And, although
Appellant argues that the claims "address computer-specific problems for
automatically identifying electronic shipment data indicative of potential
concurrent delivery shipment candidates," claim 1, for example, merely
recites "determining, ... based at least in part on the first electronic
shipment information and the second electronic shipment information,
whether delivery of the first shipment and delivery of the second shipment to
the destination location can occur concurrently." In other words, the claim
recites a result without meaningfully limiting how the claimed method
achieves that result. We also find nothing in the Specification, nor does
Appellant direct us to anything in the Specification, to indicate that this
determination requires any specialized computer hardware or inventive
computer components, invokes any assertedly inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions, e.g., receiving and
processing information, which is not enough for patent-eligibility.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-20 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
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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)(l )(iv).
AFFIRMED
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