ALEXANDER LANTSMAN

Patent Trials and Appeals Board

Mar 24, 2022

2021003372 (P.T.A.B. Mar. 24, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/289,896 10/10/2016 ALEXANDER D. LANTSMAN ALB004 9768 7590 03/24/2022 ALEXANDER D. LANTSMAN 303 SEA SPRAY LANE NEPTUNE, NJ 07753 EXAMINER BRINDLEY, BENJAMIN S ART UNIT PAPER NUMBER 3697 MAIL DATE DELIVERY MODE 03/24/2022 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER D. LANTSMAN ____________ Appeal 2021-003372 Application 15/289,896 Technology Center 3600 ____________ Before NINA L. MEDLOCK, BRUCE T. WIEDER, and BRADLEY B. BAYAT, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 8-10, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Alexander D. Lantsman. (Appeal Br. 3.) Appeal 2021-003372 Application 15/289,896 2 CLAIMED SUBJECT MATTER Appellant’s “invention relates to the field of financial services and, in particular, to techniques for protecting rights of bequeathers and their beneficiaries.” (Spec. ¶ 1.) More specifically, Appellant’s invention relates to a method of disposing of documents executed on paper on a pre- determined notice. (Id., Title.) Claims 1 and 10 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A method of disposing of executed on paper an original of a Will/Testament, comprising: (a) assembling a correspondence including a selectively marked package containing the original of the Will/Testament; (b) providing the correspondence by a mail delivery service to an entity adapted for: confirming receipt of and storing articles of the correspondence; and reporting an accident with contents of the articles of the correspondence to a probate court having jurisdiction over municipality of a place of the accident; (c) storing the package at the entity until arrival of a court order with directives for disposing of the articles of the correspondence to a court or court-designated authority; and (d) disposing of the package from the entity per the directives of the court order by a mail delivery service requiring a proof of acceptance of a delivery. REJECTIONS Claims 1, 8-10, 16, and 17 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1, 8-10, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Snow (US 2015/0180833 A1, pub. June 25, 2015), Miles Appeal 2021-003372 Application 15/289,896 3 (US 2006/0122858 A1, pub. June 8, 2006), and Dawson (US 2015/ 0139408 A1, pub. May 21, 2015). ANALYSIS The § 101 rejection Appellant does not separately argue claims 1, 8-10, 16, and 17. (See Appeal Br. 6-8.) We select claim 1 as representative. Claims 8-10, 16, and 17 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’ Appeal 2021-003372 Application 15/289,896 4 sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72-73, 79). With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The Examiner determines that the underlying issue being addressed [in the claims] is directed to a process for actions regarding management of a marked package containing paper documents, which is an idea. Actions of identifications, observations and determinations as Mental Processes and concepts performed in the human mind, have been deemed to be abstract by the courts. (Answer 3; see also Final Action 3.) Appellant argues that the claim limitations “are directed to steps of mechanically processing, handling and transporting . . . of tangible objects” and that “‘Mental Processes’ and ‘concepts performed in human mind’ referred to by the Examiner CANNOT FEASIBLY perform methods steps of Claims 1 and 10 upon the recited therein original paper documents and packages (or upon any other tangible objects).” (Appeal Br. 6.) Under step one of the Alice framework, we “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 Texas, LLC Appeal 2021-003372 Application 15/289,896 5 v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36; see also 2019 Guidance at 54-55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the “invention relates to the field of financial services and, in particular, to techniques for protecting rights of bequeathers and their beneficiaries.” (Spec. ¶ 1.) More specifically, the invention relates to a method of disposing of documents executed on paper on a pre-determined notice. (Id., Title.) Claim 1 provides further evidence. Claim 1 recites “[a] method of disposing of executed on paper an original of a Will/Testament, comprising: (a) assembling a correspondence,” “(b) providing the correspondence by a mail delivery service to an entity,” “(c) storing the package at the entity,” “and (d) disposing of the package.” In other words, claim 1 recites assembling/ Appeal 2021-003372 Application 15/289,896 6 collecting documents, providing the documents to an entity, storing the documents, and disposing of the documents. As an initial matter, we address Appellant’s argument that because the claim steps recite the handling of tangible objects, the claim cannot be directed to steps performed in the human mind. (See Appeal Br. 6.) In Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014), the Federal Circuit “held that a method of extracting and then processing information from hard copy documents, including paper checks, was drawn to the abstract idea of collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory.” Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1166 (Fed. Cir. 2019) (citing Content Extraction and Transmission LLC, 776 F.3d at 1347). The Manual of Patent Examining Procedure (“MPEP”) describes Content Extraction as an example of mental processes. (MPEP § 2104(a)(2), Rev. 10.2019.) Similar to Content Extraction, in Solutran, claim 1 recites “[a] method for processing paper checks, comprising . . . electronically receiving a data file,” “crediting an account,” “receiving said paper checks and scanning said checks . . . thereby creating digital images of said checks,” “and comparing . . . said digital images, with said data in the data file.” Solutran, Inc., 931 F.3d at 1164. The Federal Circuit explained that the physicality of the paper checks being processed and transported is not by itself enough to exempt the claims from being directed to an abstract idea. As we explained in In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018), “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” In fact, “[t]he claimed methods in Bilski and Alice also Appeal 2021-003372 Application 15/289,896 7 recited actions that occurred in the physical world.” Id. We have likewise determined that a method for voting that involved steps of printing and handling physical election ballots, Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376 (Fed. Cir. 2018), and a method of using a physical bankcard, Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364 (Fed. Cir. 2017), were abstract ideas. And the Supreme Court has concluded that diagnostic methods that involve physical administration steps are directed to a natural law. Mayo, 566 U.S. at 92, 132 S.Ct. 1289. The physical nature of processing paper checks in this case does not require a different result, where the claims simply recite conventional actions in a generic way (e.g., capture data for a file, scan check, move check to a second location, such as a back room) and do not purport to improve any underlying technology. Solutran, Inc., 931 F.3d at 1168; see also MPEP § 2104(a)(2), Rev. 10.2019 (describing, e.g., Voter Verified as an example of mental processes). Therefore, we do not agree with Appellant that the recitation of tangible objects in the claims precludes a determination that the claims are directed to the abstract idea of mental processes. Claim 1 recites assembling/collecting documents, providing/sending the documents, storing the documents, and disposing of the documents, according to certain rules. The Federal Circuit has determined that generating tasks to be performed based on rules, as is the case here, is an abstract idea. See Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1334 (Fed. Cir. 2013). Similar to Appellant’s claim 1, claim 1 of U.S. Patent No. 6,073,142, in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), recites “[a] post office for receiving and redistributing email messages” comprising “a receipt mechanism that receives e-mail messages,” “a database of business rules, each business rule specifying an action for Appeal 2021-003372 Application 15/289,896 8 controlling the delivery of an e-mail message,” “a rule engine . . . to selectively apply the business rules to the e-mail message,” “and a distribution mechanism . . . to control delivery of the e-mail message.” Intellectual Ventures I LLC, 838 F.3d at 1316-17. The MPEP describes Intellectual Ventures I as an example of mental processes. (MPEP § 2104(a)(2).) Additionally, the Federal Circuit has determined that receiving data from one source, selectively forwarding the data, and forwarding reply data to the source is simply the basic concept of processing information through a clearinghouse, i.e., the mental process of selectively forwarding information. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015). In short, assembling/collecting data, providing/sending data, storing data, and disposing of/deleting data may be treated as an abstract idea, i.e., the mental processes of evaluation and judgment in applying rules, and information collecting, observation, evaluation, and disposition. Claim 1 simply confines the abstract idea to the technological environment of paper- based actions. But “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). Appeal 2021-003372 Application 15/289,896 9 Claim 1 does not recite how the correspondence is assembled, how the correspondence is provided to the mail delivery service,2 how the package is stored at the entity, or how the package is disposed of. We do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54-55.) Thus, under prong one of the two prong test in the 2019 Guidance, claim 1 recites the abstract ideas of mental processes; and, under prong two, Appellant does not direct us to, and we do not find, additional elements in claim 1 that “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice framework, claim 1 is directed to an abstract idea, and we move to step two. Step two of the Alice framework has been described “as a search for an ‘ “inventive concept” ’ -i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly 2 Although claim 1 describes certain characteristics of the mail delivery service itself, this does not change our analysis. Appeal 2021-003372 Application 15/289,896 10 more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73). As an initial matter, we note that “[i]t has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). The invention claimed here is, at most, an improvement to the performance of the abstract idea, i.e., an improvement in the management of a package containing paper documents, in short, mental processes. (See supra; see also 2019 Guidance at 52.) Even if the claimed techniques are “[g]roundbreaking, innovative, or even brilliant,” that is not enough for patent eligibility. Ass’n for Molecular Pathology, 569 U.S. at 591. “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). Claim 1 recites no technological components for implementing the abstract idea or additional elements for analysis under step two of the Alice framework, i.e., the claim recites no elements or combination of elements that amount to more than the judicial exception. (See Final Action 3-4.) In sum, claim 1 does not recite additional elements for consideration under step two of the Alice framework. Appellant’s other arguments have been considered but are not persuasive. Appeal 2021-003372 Application 15/289,896 11 In view of the above, we are not persuaded that the Examiner erred in rejecting claim 1. Claims 8-10, 16, and 17 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The § 103 rejection Under 35 U.S.C. § 103, the question is whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. In short, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. The Examiner finds that Snow teaches a method of disposing of a will/testament executed on paper comprising the steps of “(a) assembling a correspondence including a selectively marked package containing ... [] ... Appeal 2021-003372 Application 15/289,896 12 the Will/Testament,” i.e., Snow “read[s] on a method for storage and handling of physical documents to be communicated upon fulfillment of a preset condition, contact addresses for communications, and documents containing a will,” “(b) providing the correspondence by a mail delivery service to an entity adapted for: confirming receipt of and storing articles of the correspondence,” i.e., Snow “read[s] on handling of physical documents and delivery by mail to a financial, legal or other professional as a sponsor of a customer,” “(c) storing the package at the entity until arrival of a court order with directives for disposing of the articles of the correspondence to a court or court-designated authority,” i.e., Snow “read[s] on a method for storage and handling of physical documents to be communicated upon fulfillment of a preset condition, and delivery to contact addresses of instructions or messages upon predetermined events or conditions inclusive of a court order,” and “(d) disposing of the package from the entity per the directives of the court order.” (Final Action 5 (first brackets in original) (emphasis omitted).) Appellant argues that the Examiner erred by failing to recognize the “incompatibility of (i) ‘encrypted electronic documents’ and Computer/Networking Arts techniques of Snow with (ii) tangible objects and techniques of Mechanical Arts of Claims 1 and 10.” (Appeal Br. 8.) Specifically, Appellant argues that “Snow teaches an Internet system 100 (Fig. 1) of Computer/Networking Art for processing ‘encrypted electronic documents’ as stated in Abstract.” (Id. at 10.) Appellant argues that “[t]he ‘encrypted electronic documents’ of Snow are computer-readable instructions of momentarily electrical states (On/Off) of transistors in programmable digital devices . . . of the system 100,” and that “the Appeal 2021-003372 Application 15/289,896 13 system 100 CANNOT FEASIBLY be used to assemble, mail, store, dispose of or otherwise mechanically process/handle/transport any tangible objects.” (Id.) Snow’s disclosure “relates to the field of document management, and more particularly, to a system and method for storing, organizing and accessing electronic (or digital) documents and paper documents.” (Snow ¶ 3.) Snow teaches that “[i]n managing documents, there may be times when a user or other party is notified in relations to a particular document(s).” (Id. ¶ 107.) “[I]nstructions or messages are delivered to a designated third party in the event of fulfillment of conditions preset by an authorized user.” (Id. ¶ 110.) “[S]uch instructions can be communicated upon fulfillment of a preset condition, such as the user’s failure to respond to an email message, or presentation of a death certificate or other document.” (Id. ¶ 111.) “[I]nstructions can be prepared by the user in paper form, signed and notarized if necessary and the third party or emergency delegate is immediately notified via email of the location of the instructions or the location of the instructions can be communicated upon fulfillment of a preset condition . . . .” (Id. ¶ 112.) “[O]ther forms of communication may also be used to convey the contents of a message and to request a response from a notified party. Other examples can include a phone call or text message or mail or courier.” (Id. ¶ 113.) In view of the above, it is clear that the document management system of Snow is not limited to encrypted electronic documents as argued by Appellant. Rather, the document management system of Snow manages documents in both paper and electronic form, including sending Appeal 2021-003372 Application 15/289,896 14 correspondence/notifications both via mail/courier and electronically. Thus, we are not persuaded by Appellant’s arguments which are premised on an overly narrow reading of Snow. In view of the above, we are not persuaded that the Examiner erred in rejecting claim 1. Claims 8-10, 16, and 17 are not argued separately and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejection of claims 1, 8-10, 16, and 17 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1, 8-10, 16, and 17 under 35 U.S.C. § 103 is affirmed. Specifically: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8-10, 16, 17 101 Eligibility 1, 8-10, 16, 17 1, 8-10, 16, 17 103 Snow, Miles, Dawson 1, 8-10, 16, 17 Overall Outcome 1, 8-10, 16, 17 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. § 1.136(a)(1)(iv). AFFIRMED