Colodny, Brian et al.

Patent Trials and Appeals Board

Aug 4, 2020

13224247 - (D) (P.T.A.B. Aug. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/224,247 09/01/2011 Brian Colodny 2501-P002 9026
68803 7590 08/04/2020
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN COLODNY and MICHAEL MCLAUGHLIN

Appeal 2019-000468
Application 13/224,247
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–19 and 21–24. 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
Chargerback, Inc. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A system for monitoring lost items, the system
comprising:
a database configured to store lost item information, the
lost item information pertaining to lost items that have been
recovered at one or more establishments;
a network interface configured to couple with a network;
and
a computing device operatively connected to the database
and the network interface, the computing device operable to:
receive lost item information submitted
electronically, via the network, by a submitter for a given
lost item that has been recovered at a particular one of the
one or more establishments;
authenticate the submitter;
identify a particular one of the one or more
establishments that is associated with the submitter;
entry of a lost item record from the one or more
establishments for the given lost item into the database,
the lost item record includes the lost item information for
the given lost item, the lost item information being
associated with the particular one of the one or more
establishments that is associated with the submitter;
browse or search the database to locate a lost item
of a current or prior patron of the one or more
establishments;
obtain establishment data from the database for the
particular one of the one or more establishments at least
when the lost item of the current or prior patron has been
located in the database, the obtained establishment data
being previously stored in the database and including at
least a logo and indicia associated with a particular one
of the one or more establishments where the lost item has
been recovered;
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customize an electronic recovery notification using
the obtained establishment data when the lost item of the
current or prior patron has been located in the database;
produce an unrecovered notification using the
obtained establishment data when the lost item of the
current or prior patron has not been located in the
database;
facilitate transmission of the electronic recovery
notification or the unrecovered notification to the current
or prior patron for display on a display of an electronic
device associated with the current or prior patron, the
electronic recovery notification presenting a plurality of
selectable indicators indicating return item options;
receive via the network interface, from the
electronic device associated with the current or prior
patron, a selection of one of the selectable indicators
selected directly from the electronic recovery
notification; and
facilitate return, at the one or more establishments,
of the lost item by shipment of the lost item from the
particular one of the one or more establishments to the
current or prior patron in accordance with the received
selection of one of the selectable indicators providing the
return item options.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Takahashi et al.
(“Takahashi” herein)
US 2004/0002998 A1 Jan. 1, 2004
Orton, III et al.
(“Orton” herein)
US 2004/0019609 A1 Jan. 29, 2004
Gross US 2004/0153413 A1 Aug. 5, 2004
Gregg et al.
(“Gregg” herein)
US 7,290,288 B2 Oct. 30, 2007
Amazon Checkout,
https://payments.amazon.com/sdui/sdui/business/cba#features,
April 1, 2010
USPS Shipping at Your Fingertips, http://www.stamps.com/welcome/,
Aug. 26, 2010 (“Stamps” herein)

REJECTIONS2
I. Claims 1–19 and 21–24 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 2, and 6–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Takahashi, Orton, and Gross.
III. Claims 10–14 and 17–19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Takahashi and Gross.

2 In addition to the enumerated rejections, the Examiner provisionally rejects
independent claims 1 and 10 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1 and 10 of copending
Application No. 13/224,244. Final Action 2–3. The Appellant does not
raise the provisional rejection in this Appeal. On the record before us,
addressing the Examiner’s provisional rejection would be premature. See Ex
parte Moncla, Appeal 2009-006448, 95 USPQ2d 1884, 1885 (BPAI 2010)
(precedential). We therefore do not reach the Examiner’s provisional
obviousness-type double-patenting rejection of claims 1 and 10.
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IV. Claims 21–23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Takahashi, Gregg, and Gross.
V. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Takahashi, Orton, Gross, and Amazon Checkout.
VI. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Takahashi, Gregg, Gross, and Amazon Checkout.
VII. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Takahashi, Orton, Gross, Amazon Checkout, and Official Notice.
VIII. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Takahashi, Orton, Gross, and Stamps.
IX. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Takahashi, Gross, and Official Notice.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject Matter Eligibility
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
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them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the
judicial exception in a manner that imposes a meaningful limit on the
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited; Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
As to Step 1 of the 2019 Revised Guidance, the Examiner does not
determine that the claims in the Appeal are beyond the categories of
statutory subject matter in § 101.
However, with regard to the inquiries corresponding to Step 2A,
Prong One, in regard to independent claim 1, the Examiner focuses on the
following claim limitations:
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“identify a particular one of the one or more establishments that
is associated with the submitter,” “entry of a lost item record
from the one or more establishments for the given lost item into
the database . . . ,” “browse or search the database to locate a
lost item . . . ,” “obtain establishment data . . . ,” “customize an
electronic recovery notification using the obtained
establishment data . . . ,” “produce an unrecovered notification
. . . ,” and “facilitate transmission of the electronic recovery
notification or the unrecovered notification . . . .”
Final Action 4. According to the Examiner, these limitations describe “a
method for processing information through a central clearinghouse,” which
the Examiner regards as an abstract idea, citing the support of Dealertrack,
Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012). Id. The Examiner also states
that the “authenticate the submitter” limitation may be understood as reciting
a method for comparing new and stored information and using rules to
identify options — a concept identified as an abstract idea in SmartGene,
Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014)
(nonprecedential). Id. at 4–5. Further, the Examiner states that claim
limitations of “receive via the network interface . . . a selection of one of the
selectable indicators . . .” and “facilitate return . . . of the lost item by
shipment . . . in accordance with the received selection of one of the
selectable indicators” describe an “idea of itself” — i.e., an “uninstantiated
concept, plan or scheme, as well as mental process (thinking) that can be
performed in the human mind or by a human using a pen and paper.” Id.
at 5. According to the Examiner, claims 10 and 21 (the other independent
claims in this Appeal) “recite the same concepts as claim 1 and are also
deemed to be directed to an abstract idea.” Id.
Viewed through the prism of the 2019 Revised Guidance, the
Examiner’s position categorizes the identified claim limitations as reciting a
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judicial exception — specifically, a mental-process abstract idea. The
Federal Circuit explained that the so-called clearinghouse process described
in Dealertrack amounted to receiving data from one source, “selectively
forwarding” the data, and forwarding reply data to the first source.
Dealertrack, 674 F.3d at 1333. The Federal Circuit has regarded such steps
of comparing and matching (or distinguishing) items to embody mental
processes that are not eligible for patenting. See In re Rudy, 956 F.3d
1379, 1384 (Fed. Cir. 2020) (comparing features, of a body of water, to
descriptions in a chart for identifying a corresponding fish hook color,
constitutes a mental process); In re BRCA1- and BRCA2-Based Hereditary
Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (comparing
one sequence of nucleotides to another, and identifying differences between
them, constitutes a mental process) (citation omitted); PerkinElmer, Inc. v.
Intema Ltd., 496 F. App’x 65, 70 (Fed. Cir. 2012) (nonprecedential) (“The
claims . . . recite the mental process of comparing data to determine a risk
level: data are gathered in the first trimester of pregnancy; data are gathered
in the second trimester of pregnancy; those data are compared to known
statistical information.”) Indeed, the Federal Circuit, in Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015),
described the Dealertrack claims as employing a “mental process.” Similar
comparing and matching (or distinguishing) features occur in the
corresponding claim limitations that the Examiner identifies — e.g., in
regard to acting on “lost item information” in order to “facilitate
transmission of the electronic recovery notification” to the corresponding
“electronic device.” Final Action 4; Answer 5–6.
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The Examiner’s comparison of certain claim 1 limitations to similar
steps of comparing and matching (or distinguishing) items, in SmartGene
(id. at 4–5), and identifying certain claim limitations as describing a “mental
process (thinking) that can be performed in the human mind or by a human
using a pen and paper” (id. at 5), confirm the Examiner’s treatment of the
claims as reciting a mental process. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (steps that “can be
performed in the human mind, or by a human using a pen and paper”
constitute “unpatentable mental processes”).
The Appellant disputes the Examiner’s determination that the
identified claim limitations describe an abstract idea. Appeal Br. 7–8.
However, the Appellant nowhere addresses the “mental process”
categorization, stating instead that the “claims are not directed to a
mathematical algorithm, a fundamental economic principal or a long
standing commercial practice” (id. at 7) and are “nothing like the long
prevalent and fundamental practices” at issue in Alice and Bilski v. Kappos,
561 U.S. 593 (2010) (id. at 8).
Therefore, we are not persuaded of error in the Examiner’s analyses
corresponding to Step 2A, Prong One, of the 2019 Revised Guidance, as to
independent claims 1, 10, and 21.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
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judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
The Appellant argues that the “[t]he claimed solution is rooted in
computer technology in order to overcome the conventional difficulties
associated with lost and found items,” in the manner of DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 7. Yet,
unlike the claims in DDR, the claims in the Appeal do not “override” an
obstacle caused by the computer network technology itself. DDR, 773 F.3d
at 1258. Rather, the present claims are more akin to those distinguished in
DDR, which use computer networks merely as tools for performing
particular practices that constitute judicially excepted subject matter. Id.
at 1257. See also Answer 9–10. Indeed, “the Alice inquiry . . . asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
The Appellant also indicates that the claims in the Appeal effect a
technological improvement. Appeal Br. 9, Reply Br. 6. Yet, the Appellant
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does not identify the nature of the alleged improvement or its basis in any
“additional elements” of the claims. As the Examiner’s states, “neither the
[Appellant’s] remarks nor the [S]pecification teach how the features recited
in the claims actually improve the functioning of a computer or other
technology.” Answer 10. Furthermore, insofar as the Appellant contends
that an improvement is accomplished by the claim limitations identified on
page 7 of the Reply Brief — i.e., the entirety of claim 1, except for the
preamble and computer hardware limitations (“database,” “network
interface,” and “computing device) — this claim language encompasses the
limitations that the Examiner identifies as reciting a judicial exception (see
Final Action 4–6), such that the Appellant does not identify any “additional
elements.”
The Appellant also argues that “the present claims do not present a
preemption concern.” Appeal Br. 9. However, “[w]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). See also Answer 11.
Therefore, we are not persuaded of error in the rejection, with regard
to analyses corresponding to Step 2A, Prong Two.
Proceeding to Step 2B of the 2019 Revised Guidance (84 Fed. Reg.
at 56), a claim that recites a judicial exception (such as an abstract idea)
might, nevertheless, be patent-eligible, if the claim contains “additional
elements amount[ing] to significantly more than the exception itself” — i.e.,
“a specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
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(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
The Appellant argues that the claims recite “sufficient structure” to
avoid being “drawn to patent ineligible subject matter,” because they recite,
e.g., for claim 1, “a database, a network interface, establishment, and a
computing device.” Appeal Br. 10. Yet, the Appellant does not explain why
these elements might operate in something other than a well-understood,
routine, conventional manner, let alone one amounting to “significantly
more” than the identified judicial exception. According to the Examiner, the
“Appellant’s invention merely uses conventional computer equipment
capable of performing generic computer functions to implement the abstract
ideas recited in the claim.” Answer 8 (citing Spec. ¶¶ 29, 32, 33, 110).
The Appellant also broadly paraphrases the claim language, in arguing
that “the pending claims add significantly more” than a judicial exception,
because “[t]here are numerous claim limitations that address details such as
receipt of information, entry of information into database records,
customizations, facilitating transmissions of notifications,
browsing/searching database records, and facilitating return of the actual lost
item, which is [sic] clearly more than an abstract idea.” Appeal Br. 10. As
an initial matter, the paraphrased claim language substantially overlaps with
claim limitations that the Examiner identifies as reciting a judicial exception,
such that the Appellant does not identify “additional limitations,” per the
Alice analysis. See Final Action 4–6. Moreover, the Appellant provides no
indication that these claim features might amount to “significantly more”
than a judicial exception, or why they would not operate in a well-
understood, routine, conventional manner.
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The Appellant also contends that each of the dependent claims recites
“additional limitations that further ensure patent eligibility.” Reply Br. 8.
Although the Appellant identifies claim language of the dependent claims
(id. at 9–11), the Appellant provides no reasoning to indicate that any of this
language might constitute “significantly more” than a judicial exception. “A
statement which 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).
In view of the foregoing, we are not persuaded of error in the
Examiner’s analyses corresponding to Step 2B of the 2019 Revised
Guidance, such that we sustain the rejection of independent claims 1, 10,
and 21, and dependent claims 2–9, 11–19, and 22–24, under 35 U.S.C.
§ 101.
Obviousness
Independent Claim 1
and Dependent Claims 2–9
Among the arguments presented for independent claim 1, the
Appellant argues (Appeal Br. 14–17) that the Examiner erroneously
analyzes the prior art, in regard to the following claim limitations:
obtain establishment data from the database for the
particular one of the one or more establishments at least when
the lost item of the current or prior patron has been located in
the database, the obtained establishment data being previously
stored in the database and including at least a logo and indicia
associated with a particular one of the one or more
establishments where the lost item has been recovered; [and]
customize an electronic recovery notification using the
obtained establishment data when the lost item of the current or
prior patron has been located in the database.
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(Emphasis added).
The Examiner maps these limitations to Takahashi. Final Action 11–
12 (citing Takahashi ¶¶ 53, 201, 205, 251, Figs. 15, 19), 43–44; Answer 15–
18 (citing Takahashi ¶¶ 53, 116, 200–201, 243, 251, Figs. 8, 15, 19).
According to the Examiner, “Takahashi reads on” the claimed features of
“customize an electronic recovery notification using the obtained
establishment data,” and “Takahashi discloses” the claimed “establishment
data . . . including at least a logo and indicia associated with a particular one
of the one or more establishments where the lost item has been recovered.”
Answer 15, 17–18.
With regard to the implementation of the claimed “logo,” the
Examiner refers to Takahashi’s disclosure of “adding an advertisement to
found-item information and sending the found-item information with the
added advertisement to the owner” (Takahashi ¶ 53), as well as Takahashi’s
“match check result screen 70” that includes a “PR information display
area 74” (id. ¶ 201, Fig. 15). Answer 16. “PR” refers to “Public Relations.”
Takahashi ¶ 109.
The Appellant argues that Takahashi fails to disclose the claimed use
of a “logo”: “[T]he PR information is to display promotional information or
sales and nowhere does Takahashi teach or indicate that ‘at least a logo and
indicia associated with a particular one of the one or more establishments’ is
included with the PR.” Appeal Br. 16.
Takahashi does not mention a “logo.” Yet, the Examiner states that
“advertisements,” such as those disclosed in Takahashi “may, and often do,
incorporate a business’s logo, indicia, and preferred colors.” Final
Action 44. Yet, the rejection relies upon the position that Takahashi actually
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teaches the identified limitation (Final Action 11; Answer 15, 17–18), which
— as the Examiner acknowledges (Final Action 44) — it does not.
Therefore, we do not sustain the rejection of independent claim 1, and
dependent claims 2–9, under 35 U.S.C. § 103(a).
Independent Claims 10 and 21
and Dependent Claims 11–19 and 22–24
Independent claim 10 recites, in part: “updating, by a server
computer, a status of the lost item in the database provided that the searching
locates the lost item in the database, the status having a plurality of status
indicators to indicate a chain of custody of the lost item.”
According to the Examiner, Takahashi’s “column of present statuses”
(of database 120) teaches the claimed “plurality of status indicators to
indicate a chain of custody of the lost item.” Final Action 20–21 (citing
Takahashi ¶¶ 251–255, Fig. 19).
Takahashi states: “The column of present statuses contains
information as to how found items are processed at present.” Takahashi
¶ 255) The Appellant argues:
The present statuses column of Takahashi simply indicates
where the item [sic] at that moment. It is not and cannot be
equated to a chain of custody that is able to track the lost item
through its progress from the time it was found until the time
the recover item is shipped to the customer or client.
Appeal Br. 23.
Even so, as stated in the Answer, “the examiner continues to believe
that the ‘chain of custody’ may refer only to the found item’s present status
or location under the broadest reasonable interpretation of the claim.”
Answer 23.
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The Examiner’s interpretation of “chain of custody” is at odds with
the language of the phrase itself, because the Examiner negates the
significance of the word “chain” — i.e., the sequence of past and present
custodians of the item. After all, “[c]laims must be ‘interpreted with an eye
toward giving effect to all terms in the claim.’” Becton, Dickinson & Co. v.
Tyco Healthcare Group, LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (quoting
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)).
The Examiner’s interpretation of “chain of custody” is also
inconsistent with the Specification, which emphasizes the presentation of a
complete record of the sequence of various locations/custodians:
The status indicators 732 may also provide for evidence
of the chain of custody of the lost item. Chain of custody may
be important for some establishments, such as hotels, casinos,
and the like. As such, the use of status indicators 732 may
make it easier to track the lost item through its progress from
the time it was found, until the time the recover[ed] item is
shipped to the customer or client.
Spec. ¶ 86 (emphasis added). Our reviewing court has explained the
significance of the Specification, for claim construction:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
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In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). The
Specification reinforces the understanding addressed above, based upon the
claim language, alone — i.e., the proper interpretation of “chain of custody”
should reflect the progress of the lost item, progress from the time it was
found, until the time it is sent to the customer or client. See Spec. ¶ 86.
Takahashi’s “column of present statuses” provides an item’s present
status, but fails to indicate the movements of the lost item, from the time it is
found, or the sequence of its locations or custodians, thereafter. See
Takahashi ¶ 255. Therefore, the Appellant persuades us of error in the
rejection of independent claim 10.
The foregoing analysis also applies to independent claim 21, which
recites “a plurality of status indicators to indicate a chain of custody of the
lost item.” See Appeal Br. 35.
Accordingly, we do not sustain the rejection of independent claims 10
and 21, along with dependent claims 11–19 and 22–24, under 35 U.S.C.
§ 103(a)
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19, 21–
24
101 Eligibility 1–19, 21–
24

1, 2, 6–9 103(a) Takahashi, Orton,
Gross
1, 2, 6–9
10–14, 17–
19
103(a) Takahashi, Gross 10–14,
17–19
21–23 103(a) Takahashi, Gregg,
Gross
21–23
Appeal 2019-000468
Application 13/224,247

19
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3 103(a) Takahashi, Orton,
Gross, Amazon
Checkout
3
24 103(a) Takahashi, Gregg,
Gross, Amazon
Checkout
24
4 103(a) Takahashi, Orton,
Gross, Amazon
Checkout, Official
Notice
4
5 103(a) Takahashi, Orton,
Gross, Stamps
5
15, 16 103(a) Takahashi, Gross,
Official Notice
15, 16
Overall Outcome 1–19, 21–
24

TIME PERIOD FOR RESPONSE
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