Ex Parte Rathbun et al

Patent Trial and Appeal Board

Jul 3, 2018

11955478 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111955,478 12/13/2007 Darryl T. Rathbun
919 7590 07/06/2018
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-320 5741
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/06/2018 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DARRYL T. RATHBUN, TRYSH WAHLIG,
THERESA BIASI, and G. JONATHAN WOLFMAN
Appeal 2016-007034
Application 11/955,478 1
Technology Center 3600
Before HUBERT C. LORIN, BART A. GERSTENBLITH and
JAMES A. WORTH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darryl T. Rathbun, et al. (Appellants) seek our review under 35
U.S.C. § 134(a) of the Final Rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Pitney Bowes Inc. as the real party in interest.
Br. 2.
Appeal2016-007034
Application 11/955,478
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method of facilitating
the maintenance of an address list of each of a plurality of
mailers, comprising;
maintaining master address information using the
computer based on current address list information received
from each of said mailers;
receiving, using the computer, change of address
information specifying a new address for each of a plurality of
movers, said change of address information being based on a
change of address flied by each of said movers;
using the computer, comparing said change of address
information to said master address information to determine a
plurality of matching movers included in both said change of
address information and said master address information;
providing each of said matching movers with a printed
form including a list of at least two of said mailers that have the
matching mover listed on their current address list and
for each of one or more responding matching movers:
(i) receiving a change of address notification
authorization from the responding matching mover, said change
of address notification authorization identifying a selected one
or more of said at least two of said mailers included in the list
provided to the responding matching mover, and
(ii) notifying each of the selected one or more of said
at least two of said mailers of the new address of the responding
matching mover.
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THE REJECTION
The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
ANALYSIS
The Appellants argue these claims as a group. See Br. 3-7. We select
claim 1 as the representative claim for this group, and the remaining
claims 2-20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014 ), identifies a two-step framework for determining whether
claimed subject matter is judicially excepted from patent eligibility under 35
U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that "[c]laims 1-20 are
directed to the abstract idea in that the crux of the claims are directed
towards "A computer implemented method of facilitating the maintenance of
an address list of each of a plurality of mailers, .... " Final Rej. 2.
The Appellants dispute the Examiner's determination.
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Application 11/955,478
Br. 3.
The Appellants begin by arguing that
[i]t is submitted that the rejected claims are not directed to this,
or any other, abstract idea. Rather, those claims are directed to
very particular technique that provides a practical application to
a real world problem. The claimed technique involves an
abstract idea, but does not claim it.
However, the Examiner did not make a determination of what is
"claimed," but rather- consistent with Alice step one - what the claim is
directed to.
The Appellants next argue that "the Examiner has exclusively (and
improperly) focused on the preamble portion of the claims, and ignored the
steps recited in the claims." Id.
First, it was not improper for the Examiner to center the determination
on the claim's preamble.
[W]e see no error here in the district court citing to the
preamble in its review of whether the claims are directed to an
abstract idea. See, e.g., BASCOM [Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)]
(citing preamble for distillation of abstract idea). The district
court's inquiry centered on determining the "focus" of the
claims, and was thus in accord with our precedent. E.g., [Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)].
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1340 (Fed. Cir. 2017).
And, second, the Examiner did not ignore the steps recited in the
claim. They were analyzed in the context of the Alice step 2 determination
(Final Rej. 6), a point the Appellants concede (Br. 4--5). It should be noted
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that, in responding to the Appellants, a fuller analysis of the claim as a
whole is provided in the Answer. Ans. 2-5.
The Appellants next argue that the claim's preamble should not have
been given the weight the Examiner gave it in characterizing what the claim
is directed to. "[I]t is contrary to normal claim interpretation to look solely
at the preamble for purposes of§ 101 analysis . . . . The Examiner has
characterized the invention unreasonably for purposes of what the invention
is 'directed to."' Br. 4.
We have already indicated that it was not improper for the Examiner
to center the step one determination on the claim's preamble.
As far as the suggestion that a claim construction analysis should have
preceded a characterizing of what the claim is directed to, "claim
construction is not an inviolable prerequisite to a validity determination
under§ 101." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1273 (Fed. Cir. 2012).
"[H]owever, ... it will ordinarily be desirable-and often necessary-
to resolve claim construction disputes prior to a § 101 analysis, for the
determination of patent eligibility requires a full understanding of the basic
character of the claimed subject matter." Id. at 1273-74.
In that regard, the method of claim 1 uses two types of information:
(a) addresses on a master mailers' address list and (b) a mover's change of
address. According to the method of claim 1, the two types of information
are "maintain[ ed]" and "receiv[ ed], respectively, and then information (b) is
compared to information (a) "to determine a plurality of matching movers
included in both" information (b) and (a). Then, according to claim 1, each
matching mover is provided "with a printed form including a list of at least
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two [mailers] that have the matching mover listed on their current address
list." Once a change of address notification authorization identifying a
selected mailer from the list on the printed form is received from a
responding matching mover, the mailer is notified of the responding
matching mover's change of address.
Accordingly, generally speaking, claim 1 is directed to the
combination of information gathering, comparing information,
communicating via a printed form, and notifying, albeit involving specific
types of information.
The Examiner's characterization, of what claim 1 is directed to, is not
inaccurate.
The "directed to" inquiry of the Alice step one determination 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); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375-
76 (Fed. Cir. 2016) (inquiring into "the focus of the claimed advance over
the prior art"). "The 'abstract idea' step of the inquiry calls upon us to look
at the 'focus of the claimed advance over the prior art' to determine if the
claim's 'character as a whole' is directed to excluded subject matter."'
Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353); see also Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), quoted in Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In this case, claim 1 as a whole is focused on "[a] computer
implemented method of facilitating the maintenance of an address list of
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each of a plurality of mailers," as stated in the preamble, notwithstanding the
recited steps call for information gathering, comparing information,
communicating via a printed form, and notifying. Cf In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (the claims' focus
"was not on an improved telephone unit or an improved server").
Furthermore, the Background section of the Specification discusses
the problem as "there [being] a need for one or more methods for updating
the address lists of mailers to stay current in light of customer moves and/or
for simplifying and facilitating the process by which a mover changes an
address or other contact information with one or more mailers." Spec. i-f 5.
According to the Specification, the inventors solved the problem by
"provid[ing] a method of facilitating the maintenance of an address list of
each of a plurality of mailers." See id. i-f 6. In light of Specification's
description of the problem and solution, the advance over the prior art by the
claimed invention is in a scheme to facilitate the maintenance of an address
list of each of a plurality of mailers. This is the heart of the invention. Cf
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ("the heart of the claimed invention lies in creating and using an
index to search for and retrieve data ... an abstract concept").
Given the focus of the claims as a whole is a scheme to facilitate the
maintenance of an address list of each of a plurality of mailers and, in light
of the Specification, the heart of the invention is "[a] computer implemented
method of facilitating the maintenance of an address list of each of a
plurality of mailers," as the preamble of the claim states, the Examiner
properly characterized claim 1 as being "directed to" "[a] computer
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implemented method of facilitating the maintenance of an address list of
each of a plurality of mailers." Final Rej. 2.
Though the Examiner's characterization, of the concept claim 1 is
directed to, is somewhat different from the more generalized one we
articulated above, it is simply a matter of having described it at a lower level
of abstraction. Cf Apple, 842 at 1240-41 ("An abstract idea can generally
be described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.").
We now tum to the question of whether the concept to which the
claims are "directed to" is a patent-ineligible abstract idea. Enfzsh, 822 F.3d
at 1335.
We stated above that, generally speaking, claim 1 is directed to
information gathering, comparing information, communicating via a printed
form, and notifying, albeit involving specific types of information. When
"the focus of the asserted claims" is "on collecting information, analyzing it,
and displaying certain results of the collection and analysis," the claims are
directed to an abstract idea. Elec. Power Grp., 830 F.3d at 1353.
"[C]omparing one thing to another" is an abstract idea. See Blue Spike, LLC
v. Google Inc., No. 14-CV-01650-YGR, 2015 WL 5260506, at *5-*6 (N.D.
Cal. Sept. 8, 2015), aff'd, No. 2016-1054, 2016 WL 5956746 (mem) (Fed.
Cir. Oct. 14, 2016). Merely combining these abstract ideas (information
gathering, comparing information, communicating via a printed form, and
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notifying) does not render the combination any less abstract. Cf Shortridge
v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL
1739256 (N.D. Cal. Apr. 14, 2015), aff'd, No. 2015-1898, 2016 WL
3742816 (Fed. Cir. July 13, 2016).
As for the Examiner's characterizing claim 1 as being directed to a
"computer implemented method of facilitating the maintenance of an
address list of each of a plurality of mailers," such a concept is no less
abstract. This is so because it is similar to concepts courts have already
determined to be abstract ideas. See, e.g., Return Mail, Inc. v. US. Postal
Serv., 868 F.3d 1350, 1368 (Fed. Cir. 2017) ("relaying mailing address data"
is an abstract idea).
The Appellants argue that the Examiner needed to rely upon evidence
to support the finding that the concept, to which claim 1 is directed, is an
abstract idea. Br. 4 ("It should not be permitted that an overbroad 'abstract
idea' assertion be used as an easy and evidence-free way of disallowing
patents, without having to consider the merits of the recited invention.").
But "both ... [the Federal Circuit] and the Supreme Court have found it
sufficient to compare claims at issue to those claims already found to be
directed to an abstract idea in previous cases." Enfzsh, 822 F.3d at 1334.
We cited such a previous case above.
The Appellants also suggest that the fact that the claims have not been
rejected under prior art grounds constitutes a factor in favor of a
determination that claim 1 is not directed to an abstract idea. See Br. 4
(referring to the Board's prior decision (2012-003813) reversing a rejection
under 35 U.S.C. § 102(b) of the claims on appeal).
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Claim limitations found to be novel and/or nonobvious can affect a
patent-eligibility determination. Cf Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371 (Fed. Cir. 2015) ("For process claims that encompass
natural phenomenon, the process steps are the additional features that must
be new and useful."). But "novelty in implementation of the idea is a factor
to be considered only in the second step of the Alice analysis."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
"[N]ovelty is a factor to be considered" when determining "whether the
claims contain an 'inventive concept' to 'transform' the claimed abstract
idea into patent-eligible subject matter." Id. Here the question is whether
claim 1 is directed to an abstract idea. "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). "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
We now tum to the step two determination.
Step two is "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 more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that
[h ]ere, the recitations of "maintaining", "receiving", "using",
"providing", and "notifying" amounts to little more than
reciting that a generic computer system (see, for examples,
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applicant's specification at page 6, lines 7 and 8) applies the
abstract idea using such tools to do so. The Claims can then be
analyzed under the second part of the analysis and the claims
require no more than a generic computer to perform generic
computer functions. Further, as a/the computer only automates
the abstract idea, the abstract idea is ineligible because the
claim can also be performed without any apparatus, and even if
it requires computer implementation, nothing more than a
generic computer is required to perform this claim, which is
insufficient to render the claim statutory. Having considered
the claims as a whole, no element or combination of elements
in the claims are sufficient to ensure that the claims amount to
significantly more than the abstract idea itself. Indeed, the
claims fail to recite any improvements to another technology or
technical field, improvements to the functioning of the
computer itself, and/or meaningful limitations beyond generally
linking the use of an abstract idea to a particular environment.
Final Rej. 6-7.
Br. 5.
The Appellants argue that
In this case, the novel (as determined by the PTAB) invention
of the present application involves a computerized service that
stores address list information for multiple mailers. When a
mover from one of the address lists is detected, the mover is
proactively contacted with the names mailers for whom they
may wish to update their address. The mover then authorizes
which mailers can receive the address update information.
Upon authorization, the mailer is then provided with the
address update.
This not a persuasive argument. Claim 1 makes no mention of storing
information. Nevertheless, "storing" information per se is itself an abstract
idea. See In re TL! Commc 'ns, 823 F .3d at 611 ("the abstract idea of
classifying and storing digital images in an organized manner"). Adding an
abstract idea is insufficient to ensure that the claimed subject matter in
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practice amounts to significantly more than to be upon an abstract idea itself.
"Contacting," "authorizing," and "providing" an address update are similarly
abstract.
The Appellants also argue that the claimed process does not have a
risk of tying up excepted subject matter and preempting others from using
the abstract idea. Br. 5.
The difficulty with this argument is that it confuses preemption with
the level of abstraction describing the abstract idea. With respect to
preemption, "[ w ]hat matters is whether a claim threatens to subsume the full
scope of a fundamental concept, and when those concerns arise, we must
look for meaningful limitations that prevent the claim as a whole from
covering the concept's every practical application." CLS Bank Int 'l v. Alice
Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J.,
concurring). Here, the argued-over limitations (e.g., "authorizing") simply
narrow the abstract idea so that it is described at a lower level of abstraction.
It does not lessen the abstract character of the idea to which the claim is
directed. Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add "significantly more" to the basic principle, with the result
that the claim covers significantly less. See Mayo, 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise§ 101
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preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id.; see also Ariosa Diagnostics, 788 F.3d at 1379 ("While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility."). "Where a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, ... preemption concerns are fully addressed and made moot."
Ariosa Diagnostics, 788 F.3d at 1379. Therefore, our finding that the claims
cover patent-ineligible subject matter necessarily addresses preemption.
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, because representative
claim 1, and claims 2-20 which stand or fall with claim 1, are directed to an
abstract idea and do not present an "inventive concept," we sustain the
Examiner's determination that they are directed to ineligible subject matter
under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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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