Ex Parte Snapp et al

Patent Trial and Appeal Board

Feb 28, 2018

13599632 (P.T.A.B. Feb. 28, 2018)

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.
13/599,632 08/30/2012 Robert F. Snapp 08049.1021-01000 3770
22852 7590 03/02/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BORISSOV, IGORN
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT F. SNAPP, MICHAEL C. GARNER,
EDGAR H. II GILLOCKII, and JAMES D. WILSON
Appeal 2016-008262
Application 13/599,632
Technology Center 3600
Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008262
Application 13/599,632
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
6-8, 15-17, 23, 25, 26, and 28-30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
THE INVENTION
The claims are directed to systems and methods for obtaining
secondary address information for business addresses. Independent claim 6,
reproduced below, is illustrative of the claimed subject matter:
6. A computer-implemented method comprising:
receiving, using at least one processor, a name of a business
and primary address information associated with the business,
the business name comprising two or more words;
creating, using the at least one processor, (i) a first code
word representative of a combination of the business name and
a default extended delivery code assigned to the primary
address information, and (ii) second code words representative
of corresponding ones of words in the business name and the
default extended delivery code;
searching, using the at least one processor, a data table
using the first and second code words, at least a portion of the
data table comprising candidate secondary address information;
determining, using the at least one processor, one or more
matches between the first and second code words and data that
is stored in the data table;
when the first code word fails to match the stored data,
identifying, using the at least one processor, elements of the
candidate secondary address information that match
corresponding ones of the second code words;
determining, using the at least one processor, that a number
of matches between a first element of the candidate secondary
1 Appellants state that the real party in interest is the United States Postal
Service. App. Br. 4.
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Application 13/599,632
address information and the second code words meets or
exceeds a threshold number;
establishing, using the at least one processor, the first
element of the candidate secondary address information as
secondary address information for the business name from the
stored data; and
based on the stored data, identifying, using the at least one
processor, an extended delivery code that corresponds to the
combination of the primary and secondary address information.
REFERENCES
Mihm US 5,387,783 Feb. 7, 1995
Gustafson US 5,659,731 Aug. 19, 1997
Payne US 7,204,415 B2 Apr. 17, 2007
Snapp US 8,280,745 B2 Oct. 2, 2012
Lush US 2001/0051503 A1 Dec. 13, 2001
Wilson US 2004/0049682 A1 Mar. 11,2004
REJECTIONS
Claims 6-8, 15-17, and 23 stand rejected on the ground of non-
statutory obviousness-type double patenting over claim 7 of Payne and
claims 1-11 ofSnapp. Final Act. 3.
Claims 6-8, 15-17, 23, 25, 26, and 28-30 stand rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter. Id. at 4.
Claims 6, 8, 15, 17,2 23, 25, 26, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilson and Gustafson. Id. at 7.
2 The heading on page 7 of the Examiner’s Final Office Action lists claim 16
rather than claim 17 as subject to this rejection. But the Examiner’s
discussion of this rejection (Final Act. 10), as well as the fact that the
Examiner addresses claim 16 in a separate rejection, makes clear that claim
17 rather than claim 16 is rejected as unpatentable over Wilson and
Gustafson.
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Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson, Gustafson, and Lush. Id. at 11.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson, Gustafson, and Mihm. Id. at 12.
ANALYSIS
Claims 6—8, 15—17, and 23—Double Patenting
Appellants have not responded to the Examiner’s rejection of claims
6-8, 15-17, and 23 on the ground of non-statutory double patenting over
claim 7 of Payne and claims 1-11 of Snapp. Therefore, Appellants have
waived any argument of error, and we summarily sustain this rejection. See
In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the
Board did not err in sustaining a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal).
Claims 6—8, 15—17, 23, 25, 26, and 28—30—Non-Statutory Subject Matter
Appellants argue the pending claims as a group. App. Br. 24-33. We
select independent claim 6 as representative of the group, and decide the
appeal of this rejection on the basis of claim 6 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1293-94 (2012), and reaffirmed in Alice
Corporation Proprietary LTD. v. CLS Bank International, 134 S. Ct. 2347,
2355 (2014). For the first step, we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea, law of nature,
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or natural phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at
1296-97). If so, we advance to the second step where “we consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application” of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). The Court has
described this second step “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 more than a patent upon the
ineligible concept itself.” Id. (citing Mayo, 132 S. Ct. at 1294 (internal
quotation marks and alterations omitted)).
Regarding the first step in the Alice framework, the Examiner finds
that the claims are directed to the abstract idea of “matching words by
creating code words for each word and matching the code words with words
stored in a database.” Final Act. 4; see also Ans. 4-5 (determining that the
claims are directed to “gathering, manipulating, combining and outputting
data” to “determin[e] secondary address information . . . that may be missing
from an address”). Regarding the second step, the Examiner finds that the
claims recite “generic computing elements” that are “known and
conventional” and thus do not add significantly more to the abstract idea.
Final Act. 5.
We agree with the Examiner that claim 6 is directed to the abstract
idea of gathering, manipulating, combining, and outputting data to determine
secondary address information for business addresses. Claim 6 is thus
similar to claims directed to the collection, organization, and manipulation
of data that our reviewing court has found to be directed to patent-ineligible
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abstract ideas. For example, in Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (2016), the court held that claims drawn to systems and
methods for performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results were directed to the abstract idea of “collecting
information, analyzing it, and displaying certain results of the collection and
analysis.” Id. at 1352, 1353. Similarly, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, National Ass ’n, 776 F.3d 1343
(Fed. Cir. 2014), the court held that claims generally reciting “a method of
1) extracting data from hard copy documents using an automated digitizing
unit such as a scanner, 2) recognizing specific information from the
extracted data, and 3) storing that information in a memory,” were drawn to
an abstract idea. Id. at 1345, 1347. Other more recent cases have reached
similar results. See Zuili v. Google LLC, —Fed. Appx.—, 2018 WL
798666, at *2 (Feb. 9, 2018) (holding that claims at issue were directed to
the abstract idea of “collecting, transmitting, analyzing, and storing data to
detect fraudulent and/or invalid clicks based on the time between two
requests by the same device or client”); Move, Inc. v. Real Estate Alliance
Ltd., —Fed. Appx.—, 2018 WL 656377, at *3 (Feb. 1, 2018) (affirming
district-court determination that claim 1 was directed to “the abstract idea of
a method for collecting and organizing information about available real
estate properties and displaying this information on a digital map that can be
manipulated by the user” (internal quotation marks omitted)).
We have reviewed Appellants’ arguments in support of their
contention that claim 6 is not directed to an abstract idea, but find them
unpersuasive. Appellants argue that the claims are not directed to an
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abstract idea because they are directed to methods and systems “that
improve the automated sorting of mail by developing more accurate
extended delivery codes for mailpieces that include incomplete addresses.”
App. Br. 26. But claim 6 does not recite the sorting of mail, or even the
application of the determined extended delivery codes to mailpieces.
Instead, it merely recites determining an extended delivery code
corresponding to a combination of primary and secondary address
information. Id. at 35 (Claims App.).
Appellants also argue that the pending claims are not directed to an
abstract idea because “they do not seek to ‘disproportionately t[ie] up the use
of the underling’ ideas.’” Id. (citing Alice, 134 S. Ct. at 2354 (alteration
added by Appellants)). This argument is not persuasive. While we
acknowledge that the Alice Court discussed the pre-emption of abstract ideas
as the reason to exclude them from patent eligibility under Section 101,
Alice, 134 S. Ct. at 2354, the Court did not require a pre-emption analysis to
determine patent eligibility. Indeed, the Alice Court performed no such
analysis of the specific claims at issue in that case.
Regarding step two of the Alice framework, we agree with the
Examiner that the elements of claim 6, considered both individually and as
an ordered combination, do not transform the nature of the claim into a
patent-eligible application of the abstract idea. Claim 6 recites a “computer-
implemented” method that uses “at least one processor” and “stored” data.
App. Br. 35-36 (Claims App.). “[M]ere . . . generic computer
implementation” of an abstract idea does not transform the abstract idea into
patent-eligible subject matter. Alice, 134 S. Ct. at 2357. Appellants argue
that the pending claims “allow for accurate sorting and ordering of the
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mailpieces to facilitate efficient delivery of the mailpieces.” App. Br. 29.
But, as noted above, claim 6 does not require mail sorting or the use of a
determined extended delivery code. Appellants also argue that that pending
claims are similar to those found patent eligible in SiRF Technology, Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010) and DDR
Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014). We disagree.
SiRF concerned a “method for calculating an absolute position of a GPS
receiver and an absolute time of reception of satellite signals,” and a GPS
receiver was “integral to each of the claims at issue.” SiRF, 601 F.3d at
1331-32. Here, the claims do not require any specialized technology or
device, but only generic computer equipment. In DDR Holdings, the court
held that claims “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
such as the Internet, were patent eligible. DDR Holdings, 773F.3datl257.
Here, however, claim 6 does not recite a specific technological solution to a
specific problem unique to the Internet, as was the case in DDR Holdings.
For the above reasons, we sustain the Examiner’s rejection of claims
6-8, 15-17, 23, 25, 26, and 28-30 as directed to patent-ineligible subject
matter.
Claims 6, 8, 15, 17, 23, 25, 26, and 28—
Unpatentable over Wilson and Gustafson
Independent claim 6 recites “determining, using the at least one
processor, that a number of matches between a first element of the candidate
secondary address information and the second code words meets or exceeds
a threshold number.” App Br. 35 (Claims App.). Independent claims 15 and
23 contain similar limitations. Id. at 37 (claims 15), 39 (claim 23). The
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Examiner relies on Gustafson’s teaching to use, in a method for rating a
match for a given entity found in a list of entities, a “threshold confidence
code” to make an intermediate determination as to which one of a plurality
of identified entities matches the given entity. Final Act. 9 (citing
Gustafson, 4:3-5). Appellants disagree that Gustafson’s threshold
confidence code corresponds to the claimed threshold number. App. Br. 20.
According to Appellants, the threshold confidence code “do[es] not provide
any indication of the number of matching entities (i.e., how many matching
entities) that have been generated.” Id. at 22. Appellants therefore assert
that Gustafson does not teach determining that a number of matches meets
or exceeds a threshold number.
We are not persuaded that Gustafson teaches the determining step.
According to the Examiner, “Gustafson’s ‘threshold confidence code’
indicates a value above which the match is true and below which there is no
match.” Ans. 19. The Examiner does not explain how assigning a
confidence value to a match equates to determining whether a number of
matches meets or exceeds a threshold number. For this reason, we are not
persuaded that claims 6, 8, 15, 16, 23, 25, 26, and 28 would have been
obvious over the combination of Wilson and Gustafson, and we decline to
sustain this rejection.
Claims 7 and 16—Unpatentable over Wilson, Gustafson, and Lush;
Claims 29 and 3 0—Unpatentable over Wilson, Gustafson, and Mihm
The Examiner’s rejection of claims 7 and 16 relies on the finding that
Gustafson teaches the determining step in independent claim 15, from which
claims 7 and 16 depend. Final Act. 11-12. As discussed above, we are not
persuaded that this finding is correct. Further, Lush is not relied upon to
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cure this deficiency. Likewise, the Examiner’s rejection of claims 29 and 30
relies on the same finding, and Mihm is not relied upon to cure the
deficiency in that rejection. Accordingly, for the reasons discussed above,
we do not sustain the Examiner’s rejections of claim 7, 16, 29, and 30.
DECISION
For the above reasons, we: (1) summarily affirm the Examiner’s
rejection of claims 6-8, 15-17, and 23 on the ground of non-statutory
obviousness-type double patenting over claim 7 of Payne and claims 1-11 of
Snapp; (2) affirm the Examiner’s rejection of claims 6-8, 15-17, 23, 25, 26,
and 28-30 as directed to non-statutory subject matter; and (3) reverse the
Examiner’s rejections of claims 6-8, 15-17, 23, 25, 26, and 28-30 under 35
U.S.C. § 103(a).
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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