International Business Machines Corporation

Patent Trials and Appeals Board

Jul 23, 2020

14224571 - (D) (P.T.A.B. Jul. 23, 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.
14/224,571 03/25/2014 Gregory J. Boss END920080155US2_IEN106542 5174
26681 7590 07/23/2020
DEPT. IEN
DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
WILLOUGHBY HILLS, OH 44094
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
adelzoppo@DD-IPLAW.COM
info@DD-IPLAW.COM
pdaugherty@DD-IPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS, ULYSSES L. CANNON,
RICK A. HAMILTON II, RUTHIE D. LYLE, and ANNE R. SAND
Appeal 2020-000923
Application 14/224,571
Technology Center 3600

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
JAMES W. DEJMEK, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as International Business
Machines Corporation. Appeal Brief 2, filed August 5, 2019 (Appeal Br.).
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BACKGROUND
This patent application concerns “enabling consumers to select
shipping options responsive to environmental impact data and parameters.”
Specification ¶ 2, filed March 25, 2014 (Spec.). Claim 1 illustrates the
claimed subject matter:
1. A computer-implemented method for changing an
implemented shipping option during the shipping of an item,
comprising executing on a central processing unit:
selecting and implementing a highest ranked one of a first
ranked plurality of shipping options for a shipping of an item,
wherein the plurality of shipping options are ranked in a first
ranking as a function of shipping option cost values determined
for each of the shipping options, wherein the shipping option cost
values comprise at least one selected from a group consisting of
environmental impact costs, shipping price costs and time-to-
delivery costs;
dynamically recalculating the shipping option cost value
determined for a selected one of the plurality of shipping options
during a shipping of the item by the implemented highest ranked
one of the first ranked plurality of shipping options by the central
processing unit;
updating the ranking of the plurality of shipping options to
generate a second ranking of the shipping options that is different
from the first ranking in response to a change in value of the
recalculated shipping option cost value determined for the
selected one of the plurality of shipping options by the central
processing unit; and
changing the implemented selected shipping option during
the shipping of the item from the highest ranked one of the first
ranking to another of the plurality of shipping options that is
ranked higher in the second updated ranking.
Appeal Br. 28.
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REJECTIONS
Claims 35 U.S.C. § References/Basis
1–18 101 Eligibility
1–5, 9–12, 14–172 103(a) Winebrake,3 Ng4
6 103(a) Winebrake, Ng, Jensen5
7, 13, 18 103(a) Winebrake, Ng, Westbrook6
8 103(a) Winebrake, Ng, Westbrook, Brown7
DISCUSSION
We have reviewed the Examiner’s rejections and Appellant’s
arguments, and except for the rejections of claims 4–8, 11–13, and 16–18
under § 103(a), Appellant has not persuaded us that the Examiner erred. For
the other rejections, as consistent with the discussion below, we adopt the
Examiner’s reasoning, findings, and conclusions on pages 2–14 of the Final
Office Action mailed April 12, 2019 (Final Act.), and pages 3–18 of the
Examiner’s Answer mailed October 3, 2019 (Ans.). We address the § 101
and § 103(a) rejections in turn.
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and

2 Although the heading of this rejection states that claims 1–4, 9–12, and 14–
17 stand rejected on this ground, the accompanying analysis makes clear that
claim 5 also stands rejected on this ground. See Final Office Action 9,
mailed April 12, 2019.
3 Winebrake et al. (US 2009/0210313 A1; August 20, 2009).
4 Ng (US 2006/0282277 A1; December 14, 2006).
5 Jensen (US 2008/0235147 A1; September 25, 2008).
6 Westbrook Jr. (US 2009/0043655 A1; February 12, 2009).
7 Brown et al. (US 2003/0065560 A1; April 3, 2003).
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate (1) whether the
claim recites subject matter that falls within one of the abstract idea
categories listed in the Revised Guidance, and if so, (2) whether the claim
fails to integrate the recited abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 51, 54; see also USPTO, October 2019
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Update: Subject Matter Eligibility at 1–2, 10–15, https://www.uspto.gov
/sites/default/files/documents/peg_oct_2019_update.pdf (“October SME
Update”) (providing additional guidance on determining whether a claim
recites a judicial exception and integrates a judicial exception into a practical
application). If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Appellant argues claims 1–18 together for this rejection, so as permitted by
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this ground of rejection
based on claim 1.
Directed To
The Revised Guidance lists three categories of abstract ideas:
(1) “mathematical concepts” (mathematical relationships, mathematical
formulas or equations, and mathematical calculations); (2) “certain methods
of organizing human activity” (fundamental economic principles or
practices, commercial or legal interactions, and managing personal behavior
or relationships or interactions between people); and 3 “mental processes”
(concepts that can be performed in the human mind or using pen and paper).
See Revised Guidance, 84 Fed. Reg. at 52 & nn.12–15. The Examiner
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determined that claim 1 recites subject matter than falls within certain
methods of organizing human activity. Final Act. 2–3.
We agree. Claim 1 recites “[a] computer-implemented method for
changing an implemented shipping option during the shipping of an item.”
Appeal Br. 28. The method (1) selects and implements the highest ranked of
a first ranked plurality of shipping options for shipping of an item, the
options ranked as a function of “shipping option cost values” including at
least one of environmental impact, shipping price, and time-to-delivery. See
Appeal Br. 28. The method then (2) dynamically recalculates the shipping
option cost value for a selected one of the plurality of shipping options
during a shipping of the item by the implemented shipping option. See
Appeal Br. 28. The method next (3) updates the ranking of the plurality of
shipping options to generate a second, different ranking of the shipping
options in response to a change in value of the recalculated shipping option
cost value determined for the selected one of the plurality of shipping
options. See Appeal Br. 28. Finally, the method (4) changes the implemented
selected shipping option from the highest ranked one of the first ranking to a
higher ranked shipping option in the second ranking during the shipping of
the item. See Appeal Br. 28. The written description explains that the
claimed method allows users such as “consumers in a business-to-consumer
scenario with an on-line retailer” and “wholesaler customers purchasing
products from e-commerce sites” to select shipping options for their items
based on cost, time-to-deliver, or environmental impact and change the
shipping option for the items during shipping in response to changes in these
parameters. See Spec. ¶¶ 3–5, 13–14, 16–17, 28.
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Appellant asserts that the claimed method falls outside the category of
certain methods of organizing human activity. See Appeal Br. 12; Reply
Brief 2, filed November 19, 2019 (Reply Br.). But the claimed method is
similar to concepts that courts have determined are fundamental economic
principles or practices. See, e.g., Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(hedging); Alice, 573 U.S. at 219 (intermediated settlement); Elec. Commc’n
Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1181–82 (Fed.
Cir. 2020) (providing advance notification of the pickup or delivery of a
mobile thing); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015) (offer-based price optimization); Mobile Telecomms.
Techs., LLC v. United Parcel Serv., Inc., 173 F. Supp. 3d 1324, 1329–35
(N.D. Ga. 2016) (providing delivery notification for express packages),
aff’d, 708 F. App’x 684 (Fed. Cir. 2018); GT Nexus, Inc. v. Inttra, Inc., No.
C 11-02145-SBA, 2015 WL 6747142, at *3–6 (N.D. Cal. Nov. 5, 2015)
(booking and tracing shipping containers through a third party), aff’d, 669 F.
App’x 562 (Fed. Cir. 2016). And claim 1 recites a commercial interaction
that is not meaningfully different from other methods of organizing human
activity that courts have determined are abstract ideas. See, e.g., Baggage
Airline Guest Servs., Inc. v. Roadie, Inc., 351 F. Supp. 3d 753, 758–61 (D.
Del. 2019) (coordinating and monitoring baggage delivery), aff’d, 783 F.
App’x 1022 (Fed. Cir. 2019); cf. Automated Tracking Sols., LLC v. Coca-
Cola Co., 723 F. App’x 989, 992–996 (Fed. Cir. 2018) (locating,
identifying, or tracking an object); Wireless Media Innovations, LLC v.
Maher Terminals, LLC, 100 F. Supp. 3d 405, 412–17 (D.N.J. 2015)
(tracking shipping containers), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016);
MacroPoint, LLC v. FourKites, Inc., No. 1:15 CV 1002, 2015 WL 6870118,
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at *2–7 (N.D. Ohio Nov. 6, 2015) (tracking freight), aff’d, 671 F. App’x 780
(Fed. Cir. 2016). We thus determine that claim 1 recites certain methods of
organizing human activity.
Claim 1 also recites mental processes. The method recited in claim 1
consists of a series of functional, result-oriented steps. See Appeal Br. 28.
These steps broadly recite what the claimed method does but do not
meaningfully limit how the claimed method does it. The claimed method is
thus similar to other broadly worded methods that courts have determined
are directed to mental processes. See, e.g., Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146–52 (Fed. Cir. 2016); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–56 (Fed. Cir. 2016);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316–19
(Fed. Cir. 2016); In re BRCA1- & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 761–65 (Fed. Cir. 2014); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370–77 (Fed. Cir. 2011); cf. Cisco
Sys., Inc. v. Uniloc 2017 LLC, No. 2019-2048, 2020 WL 2465483, at *2–3
(Fed. Cir. May 13, 2020). Like the methods in many of these decisions, the
method recited in claim 1 is so broadly drawn that it encompasses acts that
people can perform in their minds or using pen and paper.
Appellant argues that claim 1 does not recite mental processes
because “the claimed subject matter devices autonomously revise implanted
shipping options during shipping of the item” and thus the claimed invention
cannot be “practically performed in the human mind.” Appeal Br. 12. We
disagree. Claim 1 simply recites that a generic “central processing unit”
performs the claimed “computer-implemented method.” Appeal Br. 28. This
type of generic computer implementation does not place a claim outside the
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mental processes category of abstract ideas. See, e.g., Symantec Corp., 838
F.3d at 1318 (determining that the claims at issue are directed to an abstract
idea when “with the exception of generic computer-implemented steps, there
is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper”); CyberSource, 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”); see also Revised Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Because we determine that claim 1 recites abstract ideas, we next
consider whether claim 1 integrates the abstract ideas into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract ideas] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update at 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October SME Update at 12.
The only additional element recited in claim 1 is the central
processing unit. See Appeal Br. 28. The Examiner found that this element is
a “generic computer component” that claim 1 recites “at a high level of
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generality.” Ans. 6. The Examiner determined that, “considered as a whole,”
claim 1 merely uses this generic computer component to implement the
recited abstract idea and thus the claim does “not integrate the abstract idea
into a practical application.” Ans. 6.
We agree. The written description describes the central processing
unit in a manner that makes clear that it is a generic computer component.
See, e.g., Spec. ¶¶ 34 (disclosing that central processing unit 312 “executes
computer program code”), 35 (disclosing that central processing unit 312
“can read and/or write data to/from the memory 316, the storage system 332,
and/or the I/O interfaces 324”), Fig. 4 (depicting CPU 312). Claim 1 uses
this generic computer component as a tool to implement the recited abstract
ideas. See Appeal Br. 28 (claiming “a central processing unit” that executes
the “computer-implemented method”). Using a generic computer component
as a tool to implement the recited abstract ideas does not integrate the
abstract ideas into a practical application. See, e.g., Alice, 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (second and third alterations in original) (quoting Mayo, 566 U.S. at
77)); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (“Steps that do nothing more than spell out what
it means to ‘apply it on a computer’ cannot confer patent-eligibility.”). Thus,
considering the additional element along with the limitations that recite an
abstract idea, both individually and in combination, we determine that claim
1 does not integrate the recited abstract ideas into a practical application.
Claim 1 is therefore directed to abstract ideas.
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Appellant contends that claim 1 integrates the recited abstract ideas
into a practical application because the claim (1) reflects an improvement in
the functioning of a computer or an improvement to another technology or
technical field, (2) effects a transformation or reduction of a particular article
to a different state or thing, and (3) applies the abstract idea in some other
meaningful way. See Appeal Br. 15.
We disagree. First, Appellant has not shown that claim 1 involves an
improvement to computer functionality, technology, or a technical field.
Appellant points to various acts and elements discussed in the written
description to show that claim 1 recites an improvement in these areas. See,
e.g., Appeal Br. 15; Reply Br. 3–5. Although we must read claim 1 in light
of its associated written description, we cannot read limitations from the
written description into the claim when determining what the claim is
directed to. See, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
769 (Fed. Cir. 2019) (explaining that, when determining what a claim is
“directed to,” “the specification cannot be used to import details from the
specification if those details are not claimed”); Synopsys, 839 F.3d at 1149
(“The § 101 inquiry must focus on the language of the Asserted Claims
themselves.”). As discussed above, claim 1 simply uses a generic computer
component as a tool to execute the recited mental processes and certain
methods of organizing human activity. This type of generic computer
implementation does not reflect an improvement to how computers function
or an improvement to technology or a technical field. Cf. Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014) (“The Court in Alice made
clear that a claim that is directed to an abstract idea does not move into
§ 101 eligibility territory by ‘merely requir[ing] generic computer
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implementation.’” (quoting Alice, 573 U.S. at 221)); Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior
cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”). Given the broad, result-oriented language of claim 1, the
claim at most recites an improvement to an abstract idea. See, e.g., Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018)
(determining that a claim component “encompasses a patent-ineligible
abstract concept rather than an arguably technical improvement” because the
component “simply demands the production of a desired result . . . without
any limitation on how to produce that result”); In re Rosenberg, No. 2019-
2251, 2020 WL 2989246, at *3 (Fed. Cir. June 4, 2020) (determining that a
claim recites “at best an improvement on an abstract process itself and not a
technical improvement, given the broad, non-specific nature of the claim.”);
In re Gopalan, 809 F. App’x 942, 946 (Fed. Cir. 2020) (determining that the
claims at issue “do not embody a concrete solution to a problem because
they lack the specificity required to transform a claim from one claiming
only a result to one claiming a way of achieving it.” (quotation marks
omitted)).
Second, Appellant has not shown that claim 1 effects a transformation
or reduction of a particular article to a different state or thing. Appellant
contends that claim 1 recites a transformation because “the claimed subject
matter transforms a single request for shipping selection into a dynamic,
variable shipping option selection autonomously executed during the
implementation of an initial shipping option.” Appeal Br. 15 (emphasis
omitted). But claim 1 does not expressly changing a “request for shipping
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selection” into a “dynamic, variable shipping option selection” that the
method “autonomously” executes. See Appeal Br. 28. Even if claim 1 did
recite this change, this change simply manipulates data. As the Federal
Circuit has explained, “[t]he mere manipulation or reorganization of data,
however, does not satisfy the transformation prong” of the machine-or-
transformation test. CyberSource, 654 F.3d at 1375. In any event, satisfying
the transformation test alone would not show that claim 1 is patent eligible.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (explaining that “in Mayo, the Supreme Court emphasized that
satisfying the machine-or-transformation test, by itself, is not sufficient to
render a claim patent-eligible”).
Third, Appellant also fails to persuade us that claim 1 applies the
recited abstract idea in some other meaningful way. Appellant contends that
claim 1 does so because the claim “does not monopolize or otherwise
prevent or stifle innovation in the general technical field of automated
shipping option selection and deployment.” Appeal Br. 15. Assuming this is
true, that would not make claim 1 patent eligible. “While 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).
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
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limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
As noted above, the only additional element recited in claim 1 is the
central processing unit. See Appeal Br. 28. The Examiner found that this
element is well understood, routine, and conventional, see Final Act. 3;
Ans. 8, and the written description adequately supports this finding. The
written description describes the central processing unit in functional terms
and provides little in the way of implementation details about the unit. See,
e.g., Spec. ¶¶ 34–35, Fig. 4. This establishes that the central processing unit
is well understood, routine, and conventional. See In re Myers, 410 F.2d
420, 424 (CCPA 1969) (“A specification is directed to those skilled in the
art and need not teach or point out in detail that which is well-known in the
art.”); see also USPTO, Memorandum on Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available
at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Using this conventional computer component to execute the recited abstract
ideas does not supply the necessary inventive concept. See, e.g., Alice, 573
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U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”).
Appellant contends that the recalculating, updating, and changing
steps recite “subject matter [that] is not well-understood, routine[,] or
conventional in the technical field of automated shipping option selection
and deployment.” Appeal Br. 18 (quotation marks and emphases omitted).
But these steps form part of the identified abstract ideas, and the Examiner
was not required to show that the abstract ideas themselves are well
understood, routine, and conventional. See, e.g., Bridge & Post, Inc. v.
Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir. 2019) (“At Alice
step two we assess ‘whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine, and conventional.’” (quoting BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018))); BSG Tech, 899 F.3d at 1290 (“[T]he
relevant inquiry is not whether the claimed invention as a whole is
unconventional or non-routine. . . . It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” (first emphasis added)). We thus find
this argument unpersuasive.
Summary
For at least the reasons discussed above, we agree with the Examiner
that claim 1 is directed to an abstract idea and lacks an inventive concept.
We thus sustain the Examiner’s rejection of claim 1.
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Section 103 Rejection
Claims 1, 9, 14
Claim 1 recites “changing the implemented selected shipping option
during the shipping of the item from the highest ranked one of the first
ranking to another of the plurality of shipping options that is ranked higher
in the second updated ranking.” Appeal Br. 28. Independent claims 9 and 14
recite similar limitations. See Appeal Br. 31, 33.
Appellant contends that the Examiner’s combination of Winebrake
and Ng fails to teach or suggest these limitations. See Appeal Br. 19–21.
According to Appellant, Ng teaches generating “redirection instructions for
use at the conclusion and completion of the currently implemented shipping
option.” Appeal Br. 20 (quotation marks and emphases omitted). Thus, in
Appellant’s view, the combination of Ng and Winebrake fails to teach or
suggest “autonomously changing an implemented shipping option during the
shipping of an item by the implemented shipping option . . . by changing the
implemented shipping option during the shipping of the item from the
implemented, highest ranked one of the first ranking to another of the
shipping options that is ranked higher in the second updated ranking.”
Appeal Br. 20–21 (emphases omitted).
Appellant has not persuaded us that the Examiner erred. Ng does not
teach redirecting items only “at the conclusion and completion of the
currently implemented shipping option” as Appellant asserts. Ng expressly
teaches redirecting a package to a new destination before the package
reaches its original destination, that is, before the completion of the current
shipping option. See, e.g., Ng ¶¶ 17–18, 20–24, 66, 78, Fig. 8, item 94.
Because Appellant’s arguments about the Examiner’s combination of Ng
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and Winebrake rest on Appellant’s erroneous reading of Ng, we find these
arguments unpersuasive. We thus sustain the Examiner’s rejections of
claims 1, 9, and 14.

Claim 2
Claim 2 recites “[t]he method of claim 1, further comprising” the
following:
integrating computer-readable program code into a
computer system comprising the central processing unit, a
computer readable memory and a computer readable storage
medium, wherein the computer readable program code is
embodied on the computer readable storage medium and
comprises instructions that, when executed by the central
processing unit via the computer readable memory, cause the
central processing unit to perform the selecting and
implementing the highest ranked one of the first ranked plurality
of shipping options in the first ranking, dynamically
recalculating the shipping option cost value determined for the
selected one of the plurality of shipping options during the
shipping of the item by the implemented highest ranked one of
the first ranked plurality of shipping options, updating the
ranking of the plurality of shipping options to generate the
second ranking of the shipping in response to the change in value
of the recalculated shipping option cost value determined for the
selected one of the plurality of shipping options, and changing
the implemented selected shipping option during the shipping of
the item from the highest ranked one of the first ranking to
another of the plurality of shipping options that is ranked higher
in the second updated ranking.
Appeal Br. 28–29. Appellant contends that the Examiner has not shown that
the combination of Winebrake and Ng teach or suggest this limitation. See
Appeal Br. 22. Appellant contends the Examiner improperly determined that
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Winebrake could be “expanded to include the limitations” recited in this
claim. Appeal Br. 22 (brackets omitted).
Appellant has not persuaded us that the Examiner erred. The
Examiner found the combination of Winebrake and Ng teaches or suggests
all of claim 2 except for “selecting and implementing the highest ranked.”
See Final Act. 7. The Examiner concluded it would have been obvious to
modify the combination of Winebrake and Ng to perform this step because
“there are a finite number of identified, predictable potential solutions to the
recognized need” and “one of ordinary skill in the art could have pursued the
known potential solutions with a reasonable expectation of success.” Final
Act. 7. The Examiner also determined that one of ordinary skill in the art
would have been motivated to make this modification because “selecting the
strongest ranking would be consistent with the very reason for distinguishing
one choice from another through a ranking format, in the first place.” Final
Act. 7. Appellant’s conclusory arguments do not adequately address these
findings and conclusions and thus do not persuade us that the Examiner
erred. We therefore sustain the Examiner’s rejection of claim 2.
Claims 3, 10, and 15
Claim 3 recites “notifying a user of the change in value of the
shipping option cost value determined for the selected one of the plurality of
shipping options” and “presenting the updated second ranking of the
plurality of shipping options to the user.” Appeal Br. 29. Claim 3 also recites
“enabling the user to manually change the selected and implemented
shipping option during the shipping of the item to the another of the
presented shipping options in the updated second ranking of the plurality of
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shipping options.” Appeal Br. 29. Claims 10 and 15 recite similar
limitations. See Appeal Br. 31, 34.
Appellant argues that the Examiner’s combination of Winebrake and
Ng does not teach or suggest these limitations. See Appeal Br. 22–23. In
particular, Appellant contends that Ng’s user-initiated redirection does not
teach or suggest “a notification of a change in value of a selected shipping
option,” “a selected shipping option from a plurality of shipping options,” or
“presenting any rankings.” See Appeal Br. 23.
Appellant has not persuaded us that the Examiner erred. First, as
found by the Examiner, Final Act. 8, Ng teaches that once a user enters a
new address for a shipped item, a schedule generator creates a rate quote for
the new route and displays the quote to the user, see Ng ¶¶ 54–55. Thus,
contrary to Appellant’s arguments, Ng teaches “a notification of a change in
value of a selected shipping option.” Second, the Examiner found that the
combination of Winebrake and Ng teaches or suggests selecting one of the
plurality of shipping options and ranking the plurality of shipping options.
See Final Act. 8. Appellant’s argument against Ng individually does not
show that the Examiner erred. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). (“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”). We thus sustain the Examiner’s rejection of claims 3 and 10.
Claims 4–8, 11–13, and 16–18
For claims 4, 11, and 16, Appellant argues that the Examiner does not
specifically address the limitations recited in these claims. See Appeal
Br. 23–24. We agree. The Examiner addressed the recalculating recited in
these claims but did not expressly address the other recited limitations. See
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Final Act. 8–9. We therefore do not sustain the Examiner’s § 103(a)
rejections of claims 4, 11, and 16. We also do not sustain the Examiner’s
§ 103(a) rejections of claims 5–8, 12, 13, 17, and 18, which depend from
either claim 4, 11, or 16.
CONCLUSION
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–5, 9–12,
14–17 103(a) Winebrake, Ng
1–3, 9, 10,
14, 15
4, 5, 11,
12, 16, 17
6 103(a) Winebrake, Ng, Jensen 6
7, 13, 18 103(a) Winebrake, Ng, Westbrook 7, 13, 18
8 103(a) Winebrake, Ng, Westbrook, Brown 8
Overall
Outcome 1–18

Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). No
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