Jennifer L. Blackwell et al.

Patent Trials and Appeals Board

Aug 20, 2019

14640412 - (D) (P.T.A.B. Aug. 20, 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.
14/640,412 03/06/2015 Jennifer L. Blackwell P2015-06NP 1003
103720 7590 08/20/2019
Noble Systems Corporation
Attn: Karl Koster
1200 Ashwood Parkway
Suite 300
Atlanta, GA 30338-4747
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
chaggerty@noblesys.com
kkoster@noblesystems.com
noblepatent@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JENNIFER L. BLACKWELL, KARL H. KOSTER,
and ANDY E. PERDUE1
________________

Appeal 2017-009367
Application 14/640,412
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1, 5, 6, 8, and 21–29, which stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
App. Br. 2; Ans. 2.2 The Examiner previously issued additional rejections of

1 Appellants identify Noble Systems Corporation as the real party in
interest. Appeal Brief filed January 2, 2017 (“App. Br.”), 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Non-Final Action
mailed November 18, 2016 (“Non-Final Act.”); the Examiner’s Answer
mailed May 12, 2017 (“Ans.”); and the Reply Brief filed June 21, 2017
(“Reply Br.”).
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the claims under 35 U.S.C. § 103(a), but withdrew those rejections in the
Examiner’s Answer. Ans. 2–3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

THE INVENTION
Appellants describe the present invention as follows:
A mechanism is disclosed for selecting a communications
channel in a contact center to use for sending event notification
information to an individual, based in part on a profile for the
individual indicating whether consent has been received from the
individual to receive such communication. In one embodiment,
a set of rules governs how to send information to a telephone
number based on whether consent was previously provided,
which may include whether the individual associated with the
telephone number has downloaded a mobile application. An
individual may also submit a request to opt-out or withdraw
consent, which updates the profile and may impact whether and
how event notifications are sent to the individual. Various
contact devices in a contact center may be used to then transmit
the event notification based on various rules and the profile.
Abstract.
Independent claim 1 illustrates the appealed claims. Claim 1 is
reproduced below with modified formatting added for clarity and with
emphasis added to indicate the claim language that recites one or more
abstract ideas:
1. A non-transitory computer readable medium comprising
instructions that when executed by a computer processor in a
contact device cause the computer processor to:
[i] receive package delivery information in electronic form at
an interface of the contact device, the package delivery
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information indicating one of either a scheduled or completed
delivery of a package to a specified individual;
[ii] in response to receiving the package delivery information,
retrieve a profile associated with the specified individual from a
profile database into a memory of the contact device, wherein
the profile comprises data indicating:
a name of the specified individual,
a telephone number associated with the specified
individual, wherein the telephone number is a wireless
telephone number, and
a consent indication identifying whether consent
has been provided by the specified individual for allowing
a call to the telephone number to notify the specified
individual of the scheduled or completed delivery of the
package;
[iii] select one of a plurality of campaign rule sets to define
how to initiate a package delivery notification call based on
whether the consent indication identifies whether consent has
been provided by the specified individual, wherein the plurality
of campaign rule sets comprises a consent campaign rules set
(“C-CRS”) and an exempt campaign rules set (“E-CRS”), and
wherein the C-CRS is selected if the consent indication indicates
consent has been provided by the specified individual and the E-
CRS is selected if the consent indication indicates consent has
not been provided by the specified individual, wherein the C-CRS
is different from the E-CRS,
[iv] wherein the E-CRS is selected, and wherein the E-CRS
defines a rule indicating that the package delivery notification
call should be an SMS text call comprising a single text sent to
the telephone number using a free-to-end-user service; and
[v] cause the package delivery notification call to be placed to
the telephone number by the contact device using the selected
one of the plurality of campaign rule sets.

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PRINCIPLES OF LAW
A. 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 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) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 176; 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 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 (citation 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84. Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 2019 Guidance, 84 Fed. Reg. at 52–55.
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 is 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 2019 Guidance, 84 Fed. Reg. at 56.

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ANALYSIS
Step 2A, Prong 1
The Examiner finds that the following claim language “relate[s] to
economic practices in which monetary transactions between people are
managed and the obtaining, comparing[,] and processing of data:”
receiv[ing] package delivery information indicating one of either
a scheduled or completed delivery of a package to a specified
individual; retriev[ing] a profile associated with the specified
individual; select one of a plurality of campaign rule sets to
define how to initiate a package delivery notification call; and
caus[ing] the package delivery notification call to be placed.
Non-Final Act. 3 (citing claim 1).
We agree that claim 1 recites abstract ideas. Limitations [iii] and [iv]
of claim 1 recite steps of selecting a campaign rule to define how to
communicate—in the claim parlance, “how to initiate a package delivery
notification call.” These limitations reasonably can be characterized as
managing personal behavior or relations or interactions between people
including following rules or instructions. Alternatively, these limitations
also can be characterized reasonably as sales activities or behaviors or as
business relations. These different types of methods of organizing human
activities are expressly recognized by the 2019 Guidance as constituting
abstract ideas.
Furthermore, limitations [i] and [ii] of claim 1 set forth steps of
gathering data about the status of a package’s delivery (limitation [i]) and
about an individual’s profile (limitation [ii]). Limitation [v] sets forth a step
of delivering a notification about a package delivery. Gathering information
and delivering information reasonably can be characterized as managing
personal behavior or interactions between people. Such steps of managing
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human behavior and human interaction constitute certain methods of
organizing human activity that are expressly recognized by the
2019 Guidance. As such, limitations [i], [ii], and [v] also can be interpreted
reasonably as reciting abstract ideas under step 2A, prong 1, of the
2019 Guidance.
Step 2A, Prong 2
Having determined that the claims recite at least one judicial
exception, we next inquire whether the claims recite “additional elements
that integrate the [judicial] exception into a practical application.” See
2019 Guidance, 84 Fed. Reg. at 54; MPEP § 2106.05(a)–(c), (e)–(h). For
the following reasons, we determine that the claims do not so integrate the
recited abstract ideas.
The Examiner finds that “there is no indication that the combination
of elements improves the functioning of a computer or improves any other
technology.” Non-Final Act. 4. Appellants’ Specification supports this
finding.
Appellants acknowledge that an array of communication channels was
known at the time of the invention. Spec. ¶¶ 5–6 (discussing known
channels such as postal mail, email, voice call, text messaging, and instant
messaging). Appellants do not allege that they are inventing a new
communication channel or improving any given one of these known
channels, but instead assert that their invention is directed to “improved
approaches . . . for determining the appropriate channel for sending such
communications.” Id. ¶ 8. Restated, Appellants invention entails
automating the decision-making for deciding how to provide a package
delivery notification to an individual based upon received data. See claim 1.
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Claim 1, then, merely entails steps of data gathering (limitations [i]
and [ii]), steps of automating decision-making (limitations [iii] and [iv]), and
a step of sending information in a selected format (limitation [v]). Previous
cases have similarly found that such activities are conventional computer
activities or routine data-gathering steps. See, e.g., Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information.”); OIP Techs. v.
Amazon.com, Inc., 788 F.3d 1359, 1363, (Fed. Cir. 2015) (alteration in
original) (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],” by either
requiring conventional computer activities or routine data-gathering steps);
see also buySAFE, Inc. 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.”);
Bancorp Servs. v. Sun Life Assurance Co., of Canada (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims
is employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims.”).
Appellants argue that the rejection is facially deficient because it fails
to address Appellants’ arguments made during prosecution and because it
raises new arguments of patent ineligibility. App. Br. 6–7 (citing MPEP
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§ 707.07(f)). These arguments are unpersuasive because both rationales
relate to petitionable matters.
The authority of the Board under 35 U.S.C. § 6(b) is limited to
reviewing adverse decisions of patent examiners. If Appellants believe the
rejection needs to be clarified, petitions to the Director are available
under 37 C.F.R. § 1.181 to require an examiner to clarify an official action
in accordance with 37 C.F.R. § 1.104. “[P]etitionable matters should be
addressed before an appeal reaches the Board.” Ex Parte Frye, 94 USPQ2d
1072, 1078 (BPAI 2010).
Also, by regulation, “[a]ny request to seek review of the primary
examiner’s failure to designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director . . . before
the filing of any reply brief” and “[f]ailure of appellant to timely file such a
petition will constitute a waiver of any arguments that a rejection must be
designated as a new ground of rejection.” 37 C.F.R. § 41.40(a).
Appellants also argue, inter alia,
the invention is not just directed to various conventional data
gathering steps, but the application of these steps for the purpose
of ascertaining how to generate communication in the form of,
e.g., a telephone call delivering a recorded announcement or data
communications message in the form of a text message. . . .
[T]he purpose is to control how the communication occurs, and
the communication is not merely a post-solution activity.
Therefore, the claims recite “something more” that make the
claims patent eligible.
App. Br. 17.
This argument is unpersuasive. As explained above in the analysis of
step 2A, prong 1, of the 2019 Guidance, delivering information reasonably
can be characterized as managing personal behavior or interactions between
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people. Such steps of managing human behavior and interaction constitute
certain methods of organizing human activity that are expressly recognized
by the 2019 Guidance. As such, communication, per se, is not “something
more” than an abstract idea.
Appellants argue that the Examiner’s determination of what the
claims are directed to is overly broad and incompatible with the scope of
pre-emption of the claims. App. Br. 7–10. This argument is unpersuasive.
We recognize that the Supreme Court has described “the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at
216. However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellants argue that the rejection is improper because the Examiner
did not follow the USPTO’s Enfish Guidelines. App. Br. 10–12 (citing
USPTO subject matter eligibility guidelines that issued May 19, 2016)
(“Enfish Guidelines”); see also Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016) (after which the Enfish Guidelines are named).
According to Appellants, the Enfish Guidelines state that “when determining
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whether a claim is directed to an abstract idea, it is appropriate [for the
Examiner] to compare the claim [under examination] to claims already
found to be directed to an abstract idea in a previous court decision.” App.
Br. 11 (emphasis omitted) (citing Enfish Guidelines 1). Appellants then
argue why the present claims are not similar in scope to those court
decisions cited by the Examiner. Id. at 11–12.
This argument is unpersuasive. The Office’s 2016 Guidelines have
been superseded by the 2019 Guidelines, outlined above. Under step 2A,
prong 1, of the 2019 Guidelines, the appropriate inquiry is whether the
claims recite one of the recognized abstract ideas. 84 Fed. Reg. at 52–53.
Appellants also argue that the fact that the Examiner has withdrawn
the obviousness rejections in the Examiner’s Answer “impacts that patent
eligibility analysis” and “supports a determination that the claims are
directed to patent[-]eligible subject matter.” Reply Br. 2. This argument is
unpersuasive.
“The ‘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.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. Mayo, 566 U.S. at 90. See also Parker v. Flook, 437 U.S. 584,
594–95 (1978) (holding claims to “a new and presumably better method for
calculating alarm limit values,” of undisputed usefulness, to be directed to
patent-ineligible subject matter); see also Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking,
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innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.”).
In summary, the Examiner determined that claim 1 fails to recite an
improvement to the functioning of a computer or to any other technology or
technical field. See MPEP § 2106.05(a). And for the reasons set forth
above, Appellants do not persuade us that the Examiner erred in this
determination. Appellants likewise do not persuade us that claim 1 is
directed to a particular machine, a particular transformation, or add other
meaningful limitations. See MPEP §§ 2106.05(b), (c), (e). As such,
Appellants fail to persuade us that claim 1 integrates the recited abstract idea
into a practical application within the meaning of the 2019 Guidance.
84 Fed. Reg. at 52–55.
Step 2B
The Examiner further determines that the additional claim elements,
viewed individually and as an ordered combination, are insufficient to
amount to significantly more than an abstract idea. Non-Final Act. 4. More
specifically, the Examiner finds that independent claims 1, 21, and 25 recite
claim elements such as instructions, a computer processor, an interface a
contact device, a profile database, memory, and a telephone number. Id.
The Examiner determines that these recited elements “are all generic
computer elements, and would [have been] routine in any computer
implementation of the abstract idea.” Id.
Appellants argue that the Examiner erred in determining that the
claimed “contact device,” for example, is a generic computer element. App.
Br. 12–14; Reply Br. 8–10. Appellants argue that the Examiner has not
provided support for the allegation that the “contact device” is a generic
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computer element and that the Examiner has improperly ignored the
Specification, which indicates the contrary. Id.
Specifically, Appellants note that Appellants’ Specification “includes
a glossary of terms that defines ‘Contact Device’ as ‘specialized
communications device typically used in a contact center to originate
communication to an identified individual. This would encompass devices
configured to originate voice calls or SMS text calls.’” App. Br. 13 (citing
Spec. ¶ 35). Appellants argue:
One skilled in the art would not interpret this limitation as a
“generic computer element” because the specification defines it
as a specialized communications device, not as a general
processing device. Indeed, claim 1 requires that the call to the
telephone number placed by the contact device is “an SMS text
call comprising a single text sent to the telephone number using
a free-to-end-user service.” Again, one skilled in the art would
not view this limitation as a “generic computer element”
[because] . . . generic computers do not initiate SMS text calls.
Id.
Appellants’ argument is unpersuasive. Simply labeling a component
as “specialized” does not necessarily mean that a computer component adds
“significantly more” to an abstract idea within the meaning of a patent-
eligibility inquiry. If this necessarily were so, clever claim drafters could
circumvent all patent-eligibility rejections under 35 U.S.C. § 101 simply by
labeling generic computer components as “specialized.” See Flook, 437
U.S. at 593 (“respondent incorrectly assumes that if a process application
implements a principle in some specific fashion, it automatically falls within
the patentable subject matter of § 101”).
A better test for determining whether a computer component adds
significantly more to an abstract idea is to inquire whether the claimed
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abstract idea can be implemented by a generic computer. Alice, 573 U.S. at
221 (“[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.”); see also
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining that “[o]ur law demands more” than claim
language that “provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it”).
Furthermore, Appellants’ Specification supports the Examiner’s
determination that the recited contact device was a generic computing
device. Appellants cite to Figure 6 and paragraphs 138 and 139 of their
Specification as providing support for the claim limitation of causing the
package delivery notification call to be placed by the contact device. App.
Br. 4. These cited portions merely depict and describe a flowchart used for
determining what communication channel should be used for making the
delivery notification call. See, e.g., Spec. FIG. 6 (depicting a decision tree
with ultimate communication options including a voice call 620, a short
message service (SMS) text call 630, an instant message 635 and no
information being sent 660). The cited portions of Appellants’ Specification
and Drawings do not indicate that the contact device must include any
specialized processing components to carry out the communication-selection
function or that it must include any specialized communications components
to carry out these generic communication functions.
Dependent Claims
Appellants also argue that the analysis of the additional claim
elements in the dependent claims is deficient. App. Br. 15. Appellants first
take issue with the Examiner’s determination that “[a]s per claims 5–6, 8,
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21–24, and 26–29, the claims’ limitations further narrow the abstract idea
and accordingly are not enough to make the claims eligible.” Non-Final
Act. 4, cited in App. Br. 15 (emphasis added). Appellants argue
all dependent claims narrow the scope of the corresponding
independent claim, and this cannot be a reason why the
limitations recited therein are not enough to make the claims
patent eligible. If this logic were true, then no dependent claim
could ever recite any limitations that make the claim patent
eligible, since all dependent claims narrow the scope of their
corresponding independent claim.
App. Br. 15.
This argument is unpersuasive. The Examiner’s position is not that
the dependent claims are patent ineligible by virtue of the fact that the
dependent claims merely narrow the scope of claim protection being sought.
Rather, we understand the Examiner’s position to be that the dependent
claims add limitations that narrow only the abstract ideas of the independent
claims. Apple v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction.”)
Appellants’ first argument does not address the Examiner’s underlying
determination that the dependent claims narrow only the abstract idea. See
App. Br. 15.
Appellants next argue that the Examiner’s determination “glosses over
various limitations in the dependent claims that are clearly non-abstract.” Id.
at 16. Appellants more specifically list the following claim limitations for
which the Examiner allegedly provides no analysis:
• Claim 5: “receive an opt-out indication in a SMS text message
from the specified individual,”
• Claim 22: “originate the package delivery notification call as a
voice telephone call” and “play a pre-recorded announcement,”
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• Claim 23: “cause a SMS gateway system to originate the
package delivery notification call,”
• Claim 28: “the package delivery notification call is sent to the
telephone number using a free-to-end-user service.”
App. Br. 16.
This argument is unpersuasive because we disagree with Appellants’
premise that the Examiner provided no analysis. Although admittedly thin
on detail, the Examiner did reason that the dependent claims’ limitations
only narrow the underlying abstract ideas that were recited in the
independent claims. Non-Final Act. 4. As such, the Examiner’s reasoning
is sufficient to shift the burden to Appellants to present arguments for why
the claims do not merely narrow the claimed abstract ideas. But Appellants
present no persuasive arguments. They only reproduce the claim language.
“A statement [that] . . . merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(iv).
For these reasons, Appellants have not persuaded us that the
Examiner erred in concluding that the claims are directed to patent-ineligible
subject matter under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 1, 5, 6, 8, and 21–29 is
affirmed.3

3 Upon any further prosecution, the Examiner should consider whether at
least claim 1, for example, raises any questions of indefiniteness under
35 U.S.C. § 112(b). The preamble of claim 1 states that the claim is directed
to “a computer readable medium comprising instructions that when executed
by a computer processor in a contact device cause the computer processor
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

to” perform recited method steps. Claim 1 (emphasis added). This language
indicates that the claim is directed to a computer readable medium
containing instructions that have yet to be executed by a computer processor.
Limitation [v] of claim 1 sets forth the step of “caus[ing] the package
delivery notification call to be placed . . . using the selected one of the
plurality of campaign rule sets.” This limitation also indicates that claim 1
covers a process in which one particular campaign rule set has yet to be
selected.
In contrast, limitation [iv] of claim 1 recites that the exempt campaign
rule set is selected and further recites what rules this rule set defines. This
language alternatively indicates, then, that the claim is directed to a
computer readable medium that already have been executed by a computer
processor and already has had one of the computer instructions’ available
rule sets selected.
As such, the Examiner should consider whether the scope of claim 1,
for example, is (1) broad enough to cover computer readable media prior to,
but merely capable of, being executed by a computer processor, or
(2) limited to such computer readable medium that already has been
executed on a computer processor in a contact device and in which a
campaign rule already has been selected. The Examiner also should
consider whether it is reasonably clear which of these claim scopes is
encompassed by claim 1. See MPEP 2173.05(c)(I) (discussing how the
presence of a narrow range and a broader range within the same claim can
lead to undue confusion as to the intended metes and bounds of the claim);
see also Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite”).