Ex Parte Zimberoff et al

Patent Trial and Appeal Board

Dec 13, 2018

13958378 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/958,378 08/02/2013 Rafael Zimberoff
25315 7590 12/17/2018
LOWE GRAHAM JONES, PLLC
701 FIFTH A VENUE
SUITE4800
SEATTLE, WA 98104
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.
ZFRM-1-2603 7621
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAFAEL ZIMBEROFF, ALEXANDER USLONTSEV, and
STANISLA V TUGUSHEV
Appeal2017-009264
Application 13/958,378
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JOHN A.
JEFFERY.
Opinion Concurring filed by Administrative Patent Judge JUSTIN BUSCH.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 21--40. Claims 1-20 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify the real party in interest as Z-Firm, LLC. App. Br. 1.
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Application 13/958,378
STATEMENT OF THE CASE
Appellants' invention facilitates preparing a shipment by producing a
shipping label. Abstract. In one embodiment, a shipment is prepared by
generating a packing list that includes a bar code. Spec. ,r,r 14, 16, 18. The
bar code includes a uniform resource identifier (URI) that identifies a remote
code module. Id. ,r,r 18, 24. By communicating with the identified remote
code module, information is obtained to print the shipping label. Id. ,r,r 26-
27.
Claim 21 is illustrative:
21. A method in a shipment preparation computing
system for facilitating preparation of a shipment of an order,
compnsmg:
under control of the shipment preparation computing
system,
receiving shipment preparation information from a bar
code in a packing list, the shipment preparation information
including a network resource identifier that identifies a remote
code module that is remote and separate from the shipment
preparation computing system;
communicating, using the network resource identifier
from the received shipment preparation information from the bar
code, with the remote code module to obtain information for the
preparation of the shipment of the order; and
communicating, using the network resource identifier
from the received shipment preparation information from the bar
code, with the remote code module to cause the remote code
module to persistently store in a data repository status
information about the preparation of the shipment of the order;
and
initiating the shipment of the order based on the shipment
preparation information received from the bar code in the
packing list.
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THE REJECTIONS
The Examiner rejected claims 21--40 under 35 U.S.C. § 101 as
directed to ineligible subject matter. Final Act. 6-9. 2
The Examiner rejected claims 21, 22, 24, 25, 29, 30, 33, and 36-38
under 35 U.S.C. § I03(a) as being unpatentable over Friedman et al. (US
2004/0177114 Al; Sept. 9, 2004), Monteleone et al. (US 7,184,973 B2; Feb.
27, 2007), and Wilz, Sr. et al. (US 6,827,273 B2; Dec. 7, 2004). Final Act.
10-12.
The Examiner rejected claim 23 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Monteleone, Wilz, and Neal et al. (US
2007/0192191 Al; Aug. 16, 2007). Final Act. 12-13.
The Examiner rejected claims 27 and 28 under 35 U.S.C. § I03(a) as
being unpatentable over Friedman, Monteleone, Wilz, and Haverstock et al.
(US 2001/0005848 Al; June 28, 2001). Final Act. 13-14.
The Examiner rejected claim 31 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Monteleone, Wilz, and Danelski (US
2008/0183326 Al; July 31, 2008). Final Act. 14.
The Examiner rejected claim 32 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Monteleone, Wilz, and Tibbs et al. (US
2002/0010689 Al; Jan. 24, 2002). Final Act. 14.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed July 15,
2016 ("Final Act."); (2) the Appeal Brief filed Dec. 19, 2016 ("App. Br.");
(3) the Examiner's Answer mailed Apr. 18, 2017 ("Ans."); and (4) the Reply
Brief filed June 16, 2017.
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The Examiner rejected claim 34 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Monteleone, Wilz, and Beier et al. (US
2012/0005105 Al; Jan. 5, 2012). Final Act. 14--15.
The Examiner rejected claim 35 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Monteleone, Wilz, Bloom (US 2006/0020366
Al; Jan. 26, 2006), Stashluk, Jr. et al. (US 2006/0149577 Al; July 6, 2006),
and Beier. Final Act. 15-16.
The Examiner rejected claims 39 and 40 under 35 U.S.C. § I03(a) as
being unpatentable over Friedman, Monteleone, Wilz, Bloom, and
Wikipedia, the free encyclopedia, "URL redirection,"
http:// en. wikipedia. org/w /index. php ?title= URL
redirection&oldid=90579844 (Nov. 2006). Final Act. 16.
Claims 21-25, 29-33, and 36-40 stand rejected for non-statutory
obviousness-type double patenting over claims 1-5, 7-16, and 19 of U.S.
Patent No. 8,185,479 (hereinafter "the '479 Patent"). Final Act. 18.
THE INELIGIBILITY REJECTION
The Examiner finds the claims are directed to an abstract idea, namely
"preparing an item for shipment." Final Act. 6. According to the Examiner,
preparing an item for shipment is a fundamental economic practice and a
method of organizing human activity. Id. at 7. The Examiner adds that the
claimed elements do not add significantly more to the abstract idea because,
among other things, they merely recite generic computer elements that
implement generic functions that are well-understood, routine, and
conventional in the industry. Ans. 26-28. Based on these findings, the
Examiner concludes that the claims are ineligible under § 101.
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Appellants argue, among other things, that the Examiner did not
consider whether the claims' "character as a whole is directed to excluded
subject matter." App. Br. 6 (citing Enfish LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)). Appellants further argue the claimed elements are
specific operations distinctly different from conventional uses of network
identifiers, bar codes, or packing lists. Id. at 15 ( citing Deel. of Rafael
Zimberoff, March 18, 2016, App. Br., Evidence App 'x, Ex. 1 ("Zimberoff
Deel.") ,r 15). Appellants argue the Examiner provided no evidence
supporting the determination that the claimed elements are performed by
standard, off-the-shelf computers and, therefore, the claims are directed to
patent eligible subject matter because they add significantly more to the
alleged abstract idea. Id. at 15, 17.
ISSUE
Has the Examiner erred in rejecting claims 21--40 by concluding that
they are directed to ineligible subject matter under§ 101? This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the claim's elements----considered individually and
as an ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
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natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
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 (emphasis added). 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. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012) (noticing that "[f]or all inventions at some level embody,
use, reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas."); see also Enfzsh, 822 F.3d at 1337 (noticing that "describing
the claims at ... a high level of abstraction and untethered from the
language of the claims all but ensures that the exceptions to § 101 swallow
the rule."). 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).
Applying Alice step one, the Examiner finds the claims are directed to
"preparing an item for shipment." Final Act. 6. The Examiner's finding
reflects claim 21 's preamble which recites "a shipment preparation
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computing system for facilitating preparation of a shipment of an order."
Appeal Br. 30 (Claims App'x). A claim's preamble can form a basis for
characterizing the concept to which a claim is directed. See Two-Way Media
Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir.
2017) (noting "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 Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016)] (citing preamble for distillation of abstract idea).").
But there is much more in claim 21 than preparing an item for
shipment. Notably, claim 21 recites three key steps-(1) receiving a
shipment preparation information's network resource identifier from a
packing list's bar code, (2) communicating with a remote code module
identified from the network resource identifier to obtain information for an
order's shipment preparation and cause the remote code module to
persistently store status information about the order's shipment preparation,
and (3) initiating the order's shipment based on the shipment preparation
information. Thus, considered as a whole, claim 21 is not directed simply to
preparing an item for shipment per se, but is focused on preparing an item
for shipment using a barcode's URI to obtain remote shipment preparation
information. As a whole, then, claim 21 is directed to preparing an item for
shipment using a barcode's URI to obtain remote shipment preparation
information.
Further, "[t]he '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., LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir.
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2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016); see also Enfzsh, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
The Specification provides evidence as to what the invention is
directed. In this case, the Specification notes that a goal of the claimed
invention is to enable a user to prepare shipments efficiently. Spec. ,r 13.
The Background section of the Specification notes that ( 1) existing word
processors that prepare shipping labels are error prone, (2) existing special-
purpose shipping label applications are limited in network communication,
and (3) existing Web-based shipping label applications do not readily access
information stored in locations other than their own servers. Id. ,r,r 2--4.
According to the Specification, Appellants' invention achieves the goal by
providing a barcode that identifies and describes a particular item shipment.
Id. ,r 14. Appellants' barcode may contain shipment preparation information
causing a Shipment Preparation System (SPS) to perform various actions for
a shipment's preparation, or a URI causing the SPS to communicate with a
Shipment Management System (SMS) and obtain information for the
shipment's preparation. Id. In light of this description, the advance over the
prior art by the claimed invention is providing a barcode that causes a
system to perform various actions for a shipment's preparation. This is the
heart of the invention.
In short, the focus of the claims as a whole is on preparing an item for
shipment using a barcode' s URI to obtain remote shipment preparation
information and, in light of the Specification, the heart of the invention is
providing a barcode that causes a system to perform various actions for a
shipment's preparation. Therefore, the claims are reasonably characterized
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as being "directed to" preparing an item for shipment using a barcode's URI
to obtain remote shipment preparation information. "[P]reparing an item for
shipment" is too broad a characterization and not what the claims are
characterized as being "directed to." See Alice, 134 S. Ct. at 2355. Thus,
the Examiner provides insufficient evidence or reasoning to support the
determination that claim 1 is directed to an abstract idea under Alice step
one.
For the foregoing reasons, the Examiner's determination under Alice
step one is not sustainable.
Alice Step Two
But even if we were to accept the Examiner's broad characterization
of the abstract idea, we are persuaded of error in the Examiner's findings
regarding the second step of the Alice test, namely whether the recited
elements----considered individually and as an ordered combination-
transform the nature of claim 21 into a patent-eligible application of the
abstract idea to ensure that the claim amounts to significantly more than that
idea. See Alice, 134 S. Ct. at 2357.
According to the Examiner, claim 21 merely recites generic computer
elements that implement generic functions that are well-understood, routine,
and conventional in the industry. Ans. 27-28. Appellants, however,
contend that the recited functions are not conventional operations performed
by standard, off-the-shelf computers. App. Br. 15. In effect, Appellants
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contend that the recited functions are not well-understood, routine, and
conventional activities previously known to the industry. See id.
It is the Examiner's burden to show-with supporting facts-that the
recited limitations are well-understood, routine, and conventional where, as
here, the Examiner relies on such a basis for the ineligibility rejection. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination"). In other words, the
Examiner bears the initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (citing
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the Examiner
meets that burden, the burden then shifts to the applicant to rebut the prima
facie case with evidence or argument. Oetiker, 977 F.2d at 1445. Then,
patentability is determined on the totality of the record by a preponderance
of evidence with due consideration of persuasiveness of argument. Id.
Accord MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.07 (9th
ed. Rev. 08.2017, Jan. 2018).
Here, the Examiner did not satisfy the initial burden of establishing a
prima facie case of ineligibility under § 101 by providing the requisite
factual support for limitations that are said to be well-understood, routine,
and conventional. Thus, even if we were to accept the Examiner's overly
broad characterization of the abstract idea under the first step of the Alice
test (which we do not), the Examiner's ineligibility rejection is nevertheless
further problematic under Alice step two given its factual deficiencies.
Accordingly, we are persuaded that the Examiner erred in rejecting
claims 21--40 under § 101. Because this issue is dispositive regarding our
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reversing the Examiner's rejection of these claims, we need not address
Appellants' other associated arguments regarding this rejection.
THE OBVIOUSNESS REJECTION OVER FRIEDMAN, MONTELEONE,
ANDWILZ
The Examiner finds that Friedman discloses many recited elements of
independent claim 21 including, among other things, receiving, under
control of a shipment preparation computing system, shipment preparation
information from a bar code in a packing list. Final Act. 10. The Examiner
also finds that Friedman's shipment preparation information includes a
network resource identifier that identifies a code module. Id.
Although the Examiner acknowledges that Friedman's code module is
not remote and separate from the shipment preparation computing system,
the Examiner cites Monteleone for teaching this feature. Id. The Examiner
also acknowledges that Friedman does not disclose communicating with the
code module using the network resource identifier from the received
shipment preparation information from the bar code. Id. at 11. The
Examiner, however, cites Wilz for teaching this feature in concluding that
the claim would have been obvious. Id. Notably, the Examiner finds Wilz
discloses communicating with a routing, tracking and delivery (R TD)
Internet server using a web-site uniform resource locator (URL) from a
URL-encoded bar code symbol. Ans. 37-38 (citing Wilz col. 26, 11. 15-33).
Appellants argue that the Examiner's reliance on Wilz is misplaced
because, among other things, the Examiner's cited passage of Wilz does not
disclose obtaining a URL from the URL-encoded bar code symbol to
communicate with the R TD Internet server, but rather discloses accessing
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the RTD Internet server to obtain the URL-encoded bar code symbol. App.
Br. 21. According to Appellants, their interpretation of the Examiner's cited
passage is supported and reinforced by Wilz's Figures 12-16 and related
text. Id. at 21-25.
ISSUES
I. Under§ 103(a), has the Examiner erred by finding that Friedman,
Monteleone, and Wilz collectively would have taught or suggested:
( 1) communicating, using a network resource identifier from a
received shipment preparation information from a bar code, with a remote
code module to cause the remote code module to persistently store in a data
repository status information about the preparation of a shipment of an order
recited in claim 21 ("the communication limitation")?
(2) posting information about the preparation of the shipment of the
order to the remote code module, based at least in part on post-back
information recited in claim 25?
II. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
ANALYSIS
Claims 21, 22, 24, 29, 30, 33, and 36--38
We begin by noting that the Examiner's reliance on the Friedman and
Monteleone references in the obviousness rejection of claim 21 is
undisputed. Rather, as noted above, this dispute turns solely on the
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Examiner's reliance on Wilz for teaching the communicating limitation.
Therefore, we confine our discussion principally to Wilz.
In the rejection, the Examiner finds Wilz's log-in procedure disclosed
in column 26, lines 15-33 teaches the communicating limitation. Final Act.
11. Notably, the Examiner finds Wilz's log-in procedure explicitly discloses
two bar codes----one that is scanned to access a remote system initially, the
other that is printed and placed on a package for shipping. Ans. 46.
Turning to Wilz, Package Log-In/Shipping Subsystem 52 logs in a
package with a relational database management system (RDBMS)
maintained within an RTD Internet Server 51. Wilz col. 26, 11. 15-22; Fig.
9. Wilz's log-in procedure involves four separate log-in steps. Id. col. 26,
11. 22-33. The first step involves accessing a RTD Internet Server 51 by
reading a "predesignated URL-encoded bar code symbol" specifying its
address on the Internet. Wilz's second log-in step involves entering
package-related information into a system by way of the Internet. The third
log-in step involves creating and printing a "custom bar code symbol label"
encoded with the URL, a zip-code, and an address label bearing the entity's
name and address to whom the package will be delivered. Wilz's log-in
procedure, then, at least suggests two bar codes-the first log-in step's
"predesignated URL-encoded bar code symbol," and the third log-in step's
"custom bar code symbol label."
Appellants' arguments regarding Wilz' alleged shortcomings
involving one bar code obtained by accessing the RTD Internet server (App.
Br. 21-25 (citing Wilz col. 26, 11. 15-33; col. 28, 1. 60-col. 27, 1. 27; col. 29,
11. 35--41, 58---67; Figs. 12-16)) do not squarely address-let alone
persuasively rebut-the Examiner's findings in connection with Wilz' log-in
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procedure that, as noted above, explicitly discloses two bar codes. Nor do
we find availing Appellants' argument that Wilz's predesignated URL-
encoded bar code symbol of the first log-in step suggests Wilz's package
log-in system 52 knows a priori the identity and location of the RTD
Internet Server 51. App. Br. 21. Not only is this contention speculative and
unsubstantiated, nothing in the claim requires that the shipment preparation
computing system be unaware of the remote code module's identity and
location, particularly in light of the open-ended term "comprising" in the
preamble of claim 21. Nor do we find availing Appellants' argument there
is no need to scan a bar code to determine its location. Id. Appellants fail to
substantiate this assertion with persuasive evidence, for such attorney
argument-without supporting evidence-has little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Thus, based on Wilz's
log-in procedure functionality, we see no error in the Examiner's finding
that Wilz's first log-in step at least suggests communicating, using a URL
(the claimed "network resource identifier") from received shipment
preparation information from a URL-encoded bar code symbol (the claimed
"bar code"), with an RTD Internet Server 51 (the claimed "remote code
module") to cause the RTD Internet Server 51 to store persistently in a data
repository status information about preparing an order's shipment. See Ans.
38--41.
Lastly, we find no error in the Examiner's articulated reason to
combine the references (Final Act. 11 }-proposed enhancements to Wilz
that, as noted above, predictably use prior art elements according to their
established functions to yield a predictable result. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,417 (2007). Despite Appellants' arguments to
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the contrary (App. Br. 25), the Examiner's proposed combination is not
based solely on impermissible hindsight, but rather supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21, and claims 22, 24, 29, 30, 33, and 36-38 not argued separately
with particularity.
Claim 25
We do not sustain the Examiner's obviousness rejection of claim 25
(Final Act. 11-12), which recites, in pertinent part, received shipment
preparation information from a bar code in a packing list includes a URI that
identifies shipment information and post-back information. We begin by
noting claim 25 can be reasonably interpreted to recite ( 1) the URI identifies
the shipment information and the post-back information, or (2) the received
shipment preparation information includes the post-back information and the
URI identifies the shipment information. Despite this ambiguity, we
nonetheless find the Examiner's obviousness rejection problematic for the
reasons noted below, but leave to the Examiner to consider the definiteness
of this language under the second paragraph of§ 112 after this opinion. 3
3 To the extent that these alternative interpretations rise to the level of
indefiniteness under 35 U.S.C. § 112, second paragraph, is a question that is
not before us. We do note, however, that "if a claim is amenable to two or
more plausible claim constructions, the US PTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI
2008) (precedential); see also MPEP § 2173.05(b) (citing Miyazaki).
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We next construe the key disputed limitation of claim 25 which
recites, in pertinent part, "post-back" information. Although the term is not
defined in Appellants' Specification, the Specification nevertheless indicates
that a post-back URI provides information about shipment preparation.
Spec. ,r 40. According to the Specification, "ll}or example, it may provide
an indication that the shipment corresponding to order 00298 has been
shipped, an indication that a shipping label for the order has been produced,
and the like." Id. We emphasize "for example" here, for these forms of
"post-back" information are merely exemplary, and while this description
informs our construction of the term "post-back" information, it does not
limit our interpretation.
The term "post-back" is a compound term with no ordinary meaning
apart from the ordinary meaning of the individual words that make up the
compound term. We, therefore, construe the recited individual words in
accordance with their ordinary meanings. Notably, the term "post" is
defined as "[t]o enter (a unit of information) on a record," THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1414 (n. def. 5) (3rd ed.
1992); the term "back" is defined as "[i]n reply," id. at 134 (adv. def. 7).
Therefore, under its broadest reasonable interpretation, "post-back"
information encompasses information entered on a record relating to a
shipment that is in reply to the shipment.
In light of our claim construction, we find the Examiner's reliance on
Wilz's URL from the first log-in step problematic. Ans. 47. To the extent
that Wilz's URL encompasses information entered on a record relating to a
shipment that is in reply to the shipment, we cannot say on this record. Nor
will we speculate in that regard here in the first instance on appeal. That the
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Examiner's rejection maps Wilz's URL to both the recited network resource
identifier of claim 21 and the post-back information of claim 25 only further
undermines the rejection's propriety. Compare Ans. 38 (finding Wilz's
URL from the first log-in is a network resource identifier), with id. at 47
(finding Wilz's URL from the first log-in is post-back information). It is
well settled that where, as here, a claim requires two separate elements, one
element construed as having two separate functions will not suffice to meet
the claim's terms. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547
(Fed. Cir. 1994); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Accordingly, we do not sustain the Examiner's rejection of claim 25.
Because this issue is dispositive regarding the Examiner's error in rejecting
this claim, we need not address Appellants' other arguments.
THE OBVIOUSNESS REJECTION OVER FRIEDMAN, MONTELEONE,
WILZ, AND HAVERSTOCK
Claim 27
We sustain the Examiner's obviousness rejection of claim 27 (Final
Act. 13; Ans. 4 7-51) which recites, in pertinent part, shipment preparation
information from the bar code in the packing list is structured according to a
shipping protocol that defines a syntax for shipment preparation information
and corresponding item shipment actions taken by a computing system that
complies with the shipping protocol.
Appellants argue Friedman does not provide details regarding the
contents of its barcode. App. Br. 26. But Appellants' arguments do not
specifically address-let alone persuasively rebut-the Examiner's
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articulated definitions of the terms "protocol," "syntax," and "item shipment
action" on pages 4 7, 48, and 50 of the Answer. The Examiner finds
Friedman's barcode stores information regarding a location in a computing
system that stores a shipping address for a prepared shipment. Ans. 48
(citing Friedman ,r 130). According to the Examiner, given Friedman's
functionality in light of the articulated definitions, Friedman inherently
discloses a protocol that defines a syntax and corresponding item shipment
action. Id. at 47-50. Given these uncontested findings in view of
Friedman's functionality from paragraph 130 in light of the Examiner's
articulated definitions, the weight of the evidence favors the Examiner's
position.
Nor do we find availing Appellants' contention that Haverstock is
non-analogous art. App. Br. 27. According to Appellants, claim 27' s
purpose is to effect distinct item shipment actions based on a bar code's
contents. Id. at 27. But Appellants' focus on claim 27's purpose does not
sufficiently identify a particular problem faced by the inventors. See In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)) (characterizing one test of two separate tests
that define the scope of analogous prior art is "whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.") ( emphasis added).
Nor does Appellants' contention specifically address-let alone
persuasively rebut (see App. Br. 27-28}-the Examiner's finding that the
problem with which Appellants were concerned, namely expressing
commands for actions through a URI' s text, such as the techniques
described in paragraphs 92 and 93 of Haverstock, are reasonably pertinent to
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Application 13/958,378
that problem (see Ans. 50-51). Therefore, the Examiner's finding in this
regard has at least a rational basis that has not been persuasively rebutted.
On this record, then, the weight of the evidence favors the Examiner's
position.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 27. Accordingly, we sustain the Examiner's rejection of claim 27.
Claim 28
We do not sustain the Examiner's obviousness rejection of claim 28
(Final Act. 13-14; Ans. 51-53) that recites, in pertinent part, an instruction
to replace a field in the shipment preparation information with a data item
associated with an order's shipment.
The Examiner finds Friedman discloses the recited instruction. Final
Act. 13 (citing Friedman ,r,r 15, 130-133, 138); Ans. 52. According to the
Examiner, Friedman's bar code provides a location of a destination shipping
address. Ans. 52. The Examiner further finds that if Friedman's destination
shipping address is looked up for a shipment, then a blank destination
shipping address field is effectively replaced with address information that
will be retrieved. Id. Appellants argue Friedman does not disclose the
recited instruction. App. Br. 28. We agree.
Friedman's barcode on printed material includes a reference to a
computer memory address at which a recipient's shipping address whom
receives the printed material is maintained. Friedman ,r 130. Once
Friedman's printed material is packaged, a shipping system reads the
barcode information to generate an appropriate shipping label. Id. ,r 132.
Although Friedman's shipping system reads the barcode information, the
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Examiner has not shown how Friedman teaches or suggests an instruction to
replace a field in shipment preparation information, let alone replacing the
field with a data item associated with an order's shipment.
Accordingly, we are persuaded that the Examiner erred in rejecting
claim 28. Because this issue is dispositive regarding the Examiner's error in
rejecting this claim, we need not address Appellants' other arguments.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejection of claims 23,
31, 32, 34, 35, 39, and 40. Final Act. 12-16. Because these rejections are
not argued separately with particularity, we are not persuaded of error in
these rejections for the reasons previously discussed.
THE DOUBLE PATENTING REJECTION
Because Appellants do not contest the Examiner's rejection of claims
21-25, 29-33, and 36-40 under non-statutory obviousness-type double
patenting (Final Act. 18), we summarily sustain this rejection. See MPEP
§ 1205.02.
CONCLUSION
The Examiner erred in rejecting claims 21--40 under § 101.
Under§ 103, the Examiner did not err in rejecting claims 21-24, 27,
and 29--40, but erred in rejecting claims 25 and 28.
The Examiner did not err in rejecting claims 21-25, 29-33, and 36-40
on the ground of non-statutory double patenting.
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DECISION
The Examiner's decision to reject claims 21-25, 27, and 29--40 is
affirmed.
The Examiner's decision to reject claims 26 and 28 is reversed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
21
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAFAEL ZIMBEROFF, ALEXANDER USLONTSEV, and
STANISLA V TUGUSHEV
Appeal2017-009264
Application 13/958,378
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge, concurring.
I write separately because I agree with the result the majority reaches,
but I respectfully disagree with the majority's conclusion that Appellants'
claims are not directed to an abstract idea. However, because Appellants'
challenge whether particular recited elements add significantly more and
argue the Examiner did not provide evidence to support that those additional
elements are well-understood, routine, and conventional. I agree with the
decision that the Examiner's rejection of claims 21--40 under 35 U.S.C.
§ 101 should be reversed.
The Examiner concludes Appellants' claims are directed to the
abstract idea of "preparing an item for shipment," which the Examiner
explains is shorthand for the recited functional steps relating to receiving,
transmitting, and displaying information. Final Act. 2, 4---6; Ans. 2-3.
Appeal2017-009264
Application 13/958,378
Specifically, the Examiner explains Appellants "misunderstood what the
phrase 'preparing an item for shipment' represents," which "is intended as a
short-hand summary statement of the abstract idea, meant to concisely and
readably highlight the abstract nature of the claimed idea." Ans. 2. The
Examiner further states the shorthand representation of the abstract idea "is
NOT meant to set forth EVERY detail of the abstract idea; rather, that is set
out by the language in the claim rejections which sets forth the underlying
steps which perform (and thus are part of) the abstract idea." Ans. 2. Thus,
I agree with the Examiner that the Examiner's analysis considered the
character of the claims as a whole without ignoring aspects of the claims.
I also agree with the Examiner that the claims are directed to the
abstract idea of preparing an item for shipment and, further, that the abstract
idea is made up of underlying functional steps (i.e., receiving information,
communicating with a remote module to request and obtain additional and
cause the remote module to store information, and display other
information). See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) (concluding claims that focused on "collecting information,
analyzing it, and displaying certain results of the collection and analysis"
were directed to an abstract idea.).
The functional aspects of claim 21 recite receiving information from a
bar code that includes a "network resource identifier" (NRI), communicating
with the remote code module (using the NRI) to request and obtain
information and to cause the remote code module to store information in a
data repository, and initiating order shipment. As evident from reviewing
Appellants' Specification and dependent claim 24, the final step of
"initiating the shipment of the order based on the shipment preparation
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Application 13/958,378
information" is broadly recited and encompasses merely printing a shipping
label including retrieved information. Spec. ,r 27 (stating "initiating output
of a shipping label" or various other forms of transmitting or displaying data
constitutes "initiat[ing] the shipment based on the obtained information").
Displaying information is part of the abstract idea of collecting, analyzing,
and displaying the data. Elec. Power, 830 F.3d at 1355; see also SAP Am.,
Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
analysis") ( quotations omitted).
The only physical elements claim 21 recites are the shipment
preparation computing system, remote code module, and data repository.
These elements are generically recited components that are merely
performing the generic computer functions identified above of receiving,
analyzing, transmitting, storing, and displaying information. Other than the
physical elements and the functional steps just discussed, claim 21 adds only
particular details regarding the source of the NRI ( a bar code) and the
particular content of the information that is received, communicated, stored,
or the basis for initiating the shipment. The Federal Circuit explicitly stated
that limiting the particular data collected and analyzed does not change the
character of the claim. See Elec. Power, 830 F.3d at 1353 (stating that
"collecting information, including when limited to particular content (which
does not change its character as information)" is treated as "within the realm
of abstract ideas"). Therefore, I agree with the Examiner that claim 21 is
directed to an abstract idea under step one of the Alice analysis.
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Application 13/958,378
Under step two of the Alice analysis, Appellants argue the claims
recite an inventive concept. App. Br. 14--17. Specifically, Appellants argue
the computing system using the NRI to communicate with the remote code
module is not well-understood, routine and conventional activity. App.
Br. 15-16. Other than the technological environment in which the NRI is
used (i.e., identifying resources in the context of package shipment
processing), it is unclear how the recited NRI is different than the
conventional use of Uniform Resource Identifiers to, for example, navigate
to web site resources using a browser.
The unconventionality of the NRI is unclear based on Appellants'
arguments, but Appellants' have raised the issue of whether the recited NRI
usage adds significantly more to the abstract idea because it goes beyond
what is well-understood, routine, and conventional. Thus, to the extent the
Examiner maintains the position that the additional elements are merely
well-understood, routine, and conventional, it is incumbent upon the
Examiner to provide evidence supporting that position. Therefore, I agree
with the majority's reversal of the 35 U.S.C. § 101 rejection under step two
of the Alice analysis because the Examiner has not provided the requisite
evidence to support the factual determination that Appellants' recited use of
the NRI is well-understood, routine, and conventional. Berkheimer v. HP
Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination").
25