Jeffrey G. Cox

Patent Trials and Appeals Board

Oct 1, 2019

13911418 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/911,418 06/06/2013 Jeffrey G. Cox JR. 133412.00009 5794
54975 7590 10/01/2019
HOLLAND & KNIGHT LLP
10 ST. JAMES AVENUE
BOSTON, MA 02116-3889
EXAMINER
LEE, JENNIFER V
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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@hklaw.com
toni.sousa@hklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY G. COX, JR.1
____________________

Appeal 2017-011655
Application 13/911,418
Technology Center 3600
____________________

Before HUNG H. BUI, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is
VERITREAD, LLC. App. Br. 3.
2 Our Decision refers to the Specification (“Spec.”) filed June 6, 2013, the
Final Office Action (“Final Act.”) mailed March 1, 2016, the Appeal Brief
(“App. Br.”) filed January 17, 2017, and the Examiner’s Answer (“Ans.”)
mailed June 22, 2017.
Appeal 2017-011655
Application 13/911,418

2

CLAIMED SUBJECT MATTER
The claims relate to using a computer to define a shipping inquiry for
shipping heavy equipment from a starting location to a destination location.
Spec. Abstract. The claims obtain logistics criterion such as equipment
characteristics (e.g., weight and dimensions) from a database, determine
whether the characteristic is beyond a threshold, and assign weights to the
characteristic based on this determination for use in generating the shipping
cost estimate. Id. ¶ 46. The claims identify logistics criterion to the user,
including a permit and vehicle needed to transport the heavy equipment. Id.
The user selects options to submit the shipping inquiry to a single preferred
provider for the shipping services, or a group of service providers for
competitive bidding. Id. ¶ 4.
Claim 1, reproduced below, is representative of the claimed invention:
1. A computer-implemented method for submitting a
shipping inquiry, the method comprising:
defining a shipping inquiry for moving a specific piece of
equipment from a starting location to a destination location;
obtaining, from a database, a plurality of characteristics
of the specific piece of equipment to obtain at least one logistics
criterion for the specific piece of equipment, wherein the at
least one logistics criterion defines one or more characteristics
for the specific piece of equipment based upon, at least in part,
at least one of a defined manufacturer and model for a
construction vehicle;
identifying the at least one logistics criterion to a user,
wherein identifying the at least one logistics criterion to the
user includes providing to the user at least one of a particular
permit and a particular vehicle required to ship the construction
vehicle, wherein providing to the user at least one of the
particular permit and the particular vehicle required to ship the
specific piece of equipment includes providing a link, wherein
the link, when selected, provides one or more instructions
Appeal 2017-011655
Application 13/911,418

3

associated with at least one of the particular permit and the
particular vehicle required to ship the specific piece of
equipment;
determining whether at least one characteristic of the
plurality of characteristics of the specific piece of equipment is
beyond a threshold, wherein the threshold includes at least one
of a physical weight threshold and a physical dimension
threshold of the specific piece of equipment;
if the at least one characteristic is not beyond the
threshold, assigning a lower weighted value to the at least one
characteristic of the plurality of characteristics of the specific
piece of equipment based upon the determination that the at
least one characteristic is not beyond the threshold;
if the at least one characteristic is beyond the threshold,
assigning a higher weighted value to the at least one
characteristic of the plurality of characteristics of the specific
piece of equipment based upon the determination that the at
least one characteristic is beyond the threshold, wherein the
higher weight and the lower weight3 are different multiplying
factors indicative of a level of shipping complexity associated
with the at least one characteristic;
calculating a shipping estimate for the shipping inquiry
based upon which weight is assigned to the at least one
characteristic; and
selecting one of a plurality of shipping inquiry
submission options, wherein the plurality of shipping inquiry
submission options includes:
at least one direct submission option that submits the
shipping inquiry to a single preferred service provider,
requesting that the single preferred service provider fulfill the
shipping inquiry; and
at least one bid submission option that submits the
shipping inquiry to a predefined group of service providers,
requesting that one or more members of the predefined group of
service providers submit competitive bids for fulfilling the
shipping inquiry.

3 The Examiner is advised to consider whether the recited “higher weight”
and “lower weight” have proper antecedent basis.
Appeal 2017-011655
Application 13/911,418

4

App. Br. 25–26 (Claims Appendix).

REJECTION
Claims 1–25 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 5–6.4

ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we make our § 101 determinations concerning patent
eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and
requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the [p]rogress of [s]cience” under the U.S.

4 The Examiner’s rejection of claims 1–25 under 35 U.S.C. § 103 was
withdrawn contingent on the filing of an appeal in the Advisory Action
mailed July 25, 2016. However, the Examiner’s rejection under 35 U.S.C.
§ 101 was maintained in the Advisory Action.
Appeal 2017-011655
Application 13/911,418

5

Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343,
1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. 208 (2014)).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. 208 (2014)). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. 208 (2014) (quoting Mayo, 566 U.S. at 72, 79). There is no
need to proceed to the second step, however, if the first step of the
Alice/Mayo test yields a determination that the claim is directed to patent
eligible subject matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental
processes, or certain methods of organizing human
activity such as a fundamental economic practice or
managing personal behavior or relationships or
interactions between people); and
(2) additional elements that integrate the judicial exception
into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–
(h)). 84 Fed. Reg. at 51–52, 55.
Appeal 2017-011655
Application 13/911,418

6

A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 84 Fed. Reg.
at 54. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under § 101. 84 Fed.
Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
573 U.S. 208 (2014). Evaluation of the inventive concept involves
consideration of whether an additional element or combination of elements
(1) adds a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present; or (2) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present. 84 Fed.
Reg. at 56.
Step 1 of the Revised Guidance
As an initial matter, we consider whether claims 1–25 fall under one
of the statutory categories of invention enumerated under 35 U.S.C. §§ 100
and 101. Claims 1–7 recite “computer-implemented methods” which
constitute “processes” under 35 U.S.C. §§ 100 and 101. Claims 8–14 recite
a “computer program product” which constitute “articles of manufacture”
under 35 U.S.C. § 101. Claims 15–20 recite a “computing system” which
constitute “apparatuses” under 35 U.S.C. § 101. Accordingly, each of
Appeal 2017-011655
Application 13/911,418

7

claims 1–25 fall within one of the statutory categories of invention. The
patent eligibility inquiry does not end here, however, as we must proceed to
apply the Alice/Mayo test and Revised Guidance to determine whether the
claims are patent eligible.
Alice/Mayo—Step 1 (Abstract Idea)
Independent claims 1, 8, and 15 recite similar limitations. Appellant’s
arguments address claim 1 as representative of all of the claims. App. Br.
15. We likewise select claim 1 as representative of the claims and examine
it to determine whether it recites a judicial exception to patentability.
37 C.F.R. § 41.37(c)(1)(iv); 84 Fed. Reg. 54.
Step 2A—Prong 1 of the Revised Guidance (Does the Claim Recite a
Judicial Exception?)
Turning to Step 2A, Prong 1 of the Revised Guidance, we agree with
the Examiner that claim 1 recites “submitting a shipping inquiry.”5 Final
Act. 4; Ans. 6. The Revised Guidance lists “certain methods of organizing
human activity” as one category of judicial exception to patent eligibility.
84 Fed. Reg. 52. One subcategory listed under “certain methods of
organizing human activity” is “fundamental economic practices.” Id. The
Examiner finds that submitting a shipping inquiry is a fundamental
economic practice. Final Act. 6. For reasons explained below, we agree that
submitting a shipping inquiry may be considered a fundamental economic
practice. We further determine the claim falls within the subcategory of a

5 Although the claim recites other abstract ideas like calculating a shipping
estimate and selecting shipping inquiry submission options, as claimed,
these are part of the more general abstract idea of submitting a shipping
inquiry, so we do not analyze these abstract ideas separately.

Appeal 2017-011655
Application 13/911,418

8

commercial transaction because it involves steps preparatory to conducting a
transaction for shipping special equipment such as a construction vehicle.
84 Fed. Reg. 52. In summary, claim 1 recites performing steps preparatory
to “submitting a shipping inquiry” which is a judicial exception categorized
as “certain methods of organizing human activity.” Id.
Cases decided by our reviewing court support our conclusion that
claim 1 recites a judicial exception. For example, Trading Technologies
Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1094–95 (Fed. Cir. 2019) affirmed the
Board’s determination that claims of a certain patent were directed to the
abstract idea of receiving user input to send a trade order. Trading
Technologies is, of course, analogous to this case because “submitting a
shipping inquiry” bears similarity to sending a trade order in that case. OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) is
also similar to the facts of this case. In OIP, the claims at issue recited the
abstract idea of price optimization using different test offers. Transmitting
electronic messages including test offers in OIP is similar to the recited
“submitting a shipping inquiry” in this case. The claim can be further
viewed as reciting steps that are part of a shipping transaction, and case law
supports such a claim is abstract. Smart Systems Innovations, LLC v.
Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017) (claims reciting
use of bankcard to pay for public transportation determined to be abstract).
Furthermore, the prior art cited by the Examiner provides evidence
that “submitting a shipping inquiry” is a fundamental economic practice and
a commercial transaction. For instance, Barni (US 6,920,429 B1, issued
July 19, 2005) indicates it was known for customers to navigate a freight
forwarder’s or carrier’s web site to obtain shipping and rate information.
Appeal 2017-011655
Application 13/911,418

9

Barni 1:42–52. Kornacki (US 2002/0007353 A1, published January 17,
2002) states “[v]irtually all businesses and individuals require products or
goods to be shipped from one place to another at some time.” Kornacki ¶ 2.
Kornacki further states “[i]n addition to the problem of estimating the size or
class of the freight, is the issue of how to figure out the costs of carrying a
particular shipment from point A to point B or the price to the shipper for
having the freight shipped from point A to point B.” Id. ¶ 4. Hence, there is
evidence in the record to support the Examiner’s determination that
“submitting a shipping inquiry” is a fundamental economic practice. The
same evidence also supports that the claims recite a commercial transaction.
Thus, we determine that claim 1 recites a “certain method of
organizing human activity,” which is an abstract idea constituting a judicial
exception to patent eligibility under the Revised Guidelines. 84 Fed. Reg.
54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong 2 of the Revised Guidance, we consider
whether claim 1 recites additional elements, or combinations thereof, that
integrate the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). The claim recites a
“computer-implemented method” in the preamble, although a computer is
nowhere mentioned in the body of the claim. “Generally, [a] preamble does
not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1346 (Fed. Cir. 2002) (citation omitted). Although there are
circumstances in which a preamble may limit a claim, Appellant has not
shown that such a circumstance applies here. See Georgetown Rail
Equipment Company v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017)
Appeal 2017-011655
Application 13/911,418

10

(citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
(Fed. Cir. 2002)). We further note that “the PTO is obligated to give claims
their broadest reasonable interpretation during examination.” In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). This
principle requires us to read out the preamble limitation in this case where
there has been no showing that it is limiting when considering whether the
claims are patent-eligible under § 101.
Claim 1 recites a “database” in conjunction with the “obtaining” step.
Claim 1 also recites a “link” in the “identifying” step. Assuming the
“database” and “link” embody hardware or some other technical feature (see
Spec. ¶¶ 46, 60, Figures 1 [60] and 4), they are the only physical elements
recited in the claim that potentially could provide a tie to a practical
application of the recited judicial exception. The remaining elements of the
claim are data gathering steps (the claimed “defining,” “obtaining,” and
“identifying,” and “selecting”), and data manipulation steps (the claimed
“determining,” “assigning,” and “calculating”). Data gathering and
manipulation steps are generally insufficient to constitute a practical
application. TLI Communications, 823 F.3d 612–13 (Fed. Cir. 2016);
CyberSource v. Retail Decisions, 654 F.3d 1366, 1370 (Fed. Cir. 2011); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
With the exception of the “obtaining” and “identifying” steps, which use the
“database” and “link,” respectively, none of the remaining steps as claimed
requires the use of a computer or database or anything else that could
physically tie the claim to a practical application.
One of the factors identified as important to determining whether
additional elements of a claim apply the judicial exception to a practical
Appeal 2017-011655
Application 13/911,418

11

application is whether they constitute an improvement in the underlying
technology. 84 Fed. Reg. 55. In this case, the additional element recited in
claim 1 is a generic “database” that does not do not improve the functioning
of a computer, or define an improvement to another technology or technical
field. Likewise, use of a “link” to receive or send information over a
network is insufficient to define an improvement. BuySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”).
In the Answer, the Examiner indicated that the § 103 rejection was
withdrawn in view of Appellant’s amendment dated May 31, 2016. Ans. 2.
This leads us to consider whether the claims recite some improvement that
applies in the § 101 analysis. The amendment revised the claim to add the
“identifying” step, which indicates to a user logistics criteria indicating a
permit and vehicle required to ship a specific piece of equipment (a
construction vehicle) along with associated instructions. The Examiner may
have assumed that this step was “computer-implemented” and that the
provision of this information by a computer was not disclosed in the cited
references. Nonetheless, such permits and instructions existed in paper
form, and of course vehicles were needed in the prior art to transport
construction vehicles to a job site. Although the supposed computerization
of information related to these features may have been satisfactory to the
Examiner to demonstrate non-obviousness in view of the cited prior art, it is
unavailing in the § 101 analysis because mere automation of manual
processes or increasing the speed of a process, where these purported
improvements come solely from the capabilities of a general-purpose
Appeal 2017-011655
Application 13/911,418

12

computer, are not sufficient to show an improvement in computer-
functionality for purposes of § 101. FairWarning IP, LLC v. Iatric Sys., 839
F.3d 1089, 1095 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Furthermore, claim 1 does not recite an additional element that
implements the judicial exception with, or uses the judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim. 84 Fed. Reg. 55. As noted, the claim recites a generic, general-
purpose “database” and “link,” and not a particular machine. No showing
has been made that these additional elements provide some capability
beyond what would normally be expected of a database or link to provide.
Consequently, the additional elements of claim 1 do not constitute a
particular machine to which the judicial exception could be applied.
The additional elements of claim 1 do not effect a transformation or
reduction of a particular article to a different state or thing. 84 Fed. Reg. 55.
Rather, the additional elements operate on shipping information, not on an
article, and the end result is information or data, not a transformed or
reduced article.
Claim 1 further does not recite any additional element that applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. 84 Fed. Reg. 55. Rather, the only
arguably technical elements in the claim are the “database” and “link,”
which in this case are insufficient to integrate the judicial exception into a
practical application.
Appeal 2017-011655
Application 13/911,418

13

We also note that even if the remaining claim steps were tied to an
additional element, they would add insignificant extra-solution activity
because they are not connected to the judicial exception of “submitting a
shipping inquiry.” 84 Fed. Reg. 55. For example, in claim 1, “identifying
. . . [a] logistics criterion” that includes a permit, a vehicle required to ship a
construction vehicle, and associated instructions, is not necessarily
connected to the “shipping inquiry” as the claim is recited. Accordingly,
under broadest reasonable interpretation of the claim as recited, the permit,
required transportation vehicle, and instructions may be entirely ancillary to
“submitting a shipping inquiry.” Likewise, “calculating a shipping estimate
for the shipping inquiry” is not necessarily linked to “submitting a shipping
inquiry.” Consequently, the noted features of the claim merely add
insignificant extra-solution activity to the judicial exception of “submitting a
shipping inquiry.” MPEP 2106.05(g); CyberSource v. Retail Decisions, Inc.,
654 F.3d 1366, 1371 (Fed. Cir. 2011) (citing Parker v. Flook, 437 U.S. 584,
590 (1978)).
Although the preamble of claim 1 recites a “computer-implemented
method for submitting a shipping inquiry,” the claim does not recite that the
shipping inquiry is sent to a service provider. The claim only requires
selection of an option in the “selecting” step for how the “submitting” is to
be performed (single provider versus competitive bidding), and the shipping
inquiry may never be communicated to a service provider as the claim is
recited. Thus, the claim merely recites steps preparatory to actually
“submitting a shipping inquiry” which is an intended use that is insufficient
to constitute a practical application of the abstract idea recited therein. Bilski
v. Kappos, 561 U.S. 593, 612 (2010); Parker v. Flook, 437 U.S. 584, 594
Appeal 2017-011655
Application 13/911,418

14

(1978). Moreover, case law establishes competitive bidding, as recited in
the “selecting” step, is abstract. In re Schrader, 22 F.3d 290 (Fed. Cir.
1994).
Accordingly, we determine that claim 1 does not recite an additional
element sufficient to amount to a practical application of the judicial
exception. We conclude, therefore, that the claim is directed to a judicial
exception.
Alice/Mayo—Step 2 (Significantly More)
Step 2B—(Inventive Concept)
We now examine whether claim 1 contains an inventive concept
sufficient to transform the judicial exception into patent-eligible subject
matter. See Alice, 573 U.S. 208 (2014); Mayo, 566 U.S. at 72, 79. Here, we
consider whether an additional element, or combination of elements, of the
claim recites more than well-understood, routine, conventional activity in the
field defining an inventive concept. 84 Fed. Reg. 56.
Claim 1 can be viewed as an amalgamation of independent features.
The “defining” and “selecting” steps relate to preparing a shipping inquiry
for transmission to a shipping service provider. The Examiner found these
features disclosed by Barni. Final Act. 7–8. The “determining,”
“assigning,” and “calculating” steps relate to producing a “shipping
estimate” that is not necessarily tied to the “shipping inquiry.” The
Examiner relied on Kornacki to disclose this feature. Id. at 9–11. The
“obtaining” step concerns information retrieval regarding a specific piece of
equipment (a construction vehicle), including manufacturer and model. The
Examiner found this step disclosed by Damji (US 2003/0200111 A1,
published October 23, 2003). Id. at 12. The “selecting” step includes an
Appeal 2017-011655
Application 13/911,418

15

option for competitive bidding, which the Examiner found disclosed in
Tangklilisan (WO 00/46718, published August 10, 2000). Id. at 13–14. As
mentioned, the Examiner withdrew the § 103 rejection only after amendment
of the claims to include the “identifying” step that provides a user a permit
and vehicle needed to ship a specific piece of equipment (construction
vehicle), and a “link” to instructions for the permit and shipping vehicle.
Thus, with the exception of the “identifying” step, the Examiner has
shown that each of the claimed elements is disclosed in the prior art. As we
have noted, the “identifying” step is unavailing in the § 101 analysis,
because the preamble has not been shown to be limiting so that none of the
steps need be “computer-implemented” but instead could be performed
manually or in the human mind. Even if we assume the preamble is
limiting, this only would require one of the recited steps to be “computer-
implemented,” and that step need not be the “identifying” which could be
performed manually or in the human mind. Further, even if we assume the
“identifying” is performed by a computer, the mere automation of manual
processes, or increasing the speed of a manual process, where these
purported improvements come solely from the capabilities of a general-
purpose computer, is not sufficient to show an improvement in computer-
functionality for purposes of § 101. See FairWarning and Credit
Acceptance, supra.
We further note that the background section of the Specification refers
to shipping estimation systems and e-commerce websites with shipping
estimation tools. Spec. ¶ 2. The background section indicates the problem
to be solved by the invention is the complexity of calculating shipping costs
when numerous things need to be considered, such as size, weight,
Appeal 2017-011655
Application 13/911,418

16

disassembly time, reassembly time, permits, and shipping vehicle
requirements. Id. In the claim, however, only two things are considered—
weight and dimension of the construction vehicle–in “calculating a shipping
estimate.” Appellant has not shown “calculating a shipping estimate” is
computationally difficult for a human to carry out based on the weight and
dimension alone, which the Examiner indicates was known in the art. See
Final Act. 11 (citing Kornacki ¶¶ 63, 64, 67–80).
Moreover, Appellant has not demonstrated that claim 1 contains an
“inventive concept” tied to solving the problem of computational complexity
that is something more than computers would normally be expected to
provide, or that a human could not reasonably carry out the necessary
computations. Computers are well-known for use in receiving, processing
and storing data, and performing complex calculations. See Alice, 573 U.S.
at 226 (nearly every computer is capable of performing basic calculation,
storage, and transmission functions); Flook, 437 U.S. at 594 (recomputing or
readjusting alarm limit values does not provide inventive concept); Bancorp
Services v. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir. 2012) (basic function of
computer is performance of repetitive [complex] calculations). In any case,
the “determining,” “assigning,” and “calculating” steps to determine a
“shipping estimate” are not necessarily tied to the judicial exception of
“submitting a shipping inquiry” and thus are incapable of transforming it
into patent-eligible subject matter.
Accordingly, we conclude the additional elements of claim 1 are
insufficient to constitute an inventive concept that could transform the
judicial exception into patent-eligible subject matter. Instead, claim 1,
representative of all claims, is directed to a judicial exception, and the
Appeal 2017-011655
Application 13/911,418

17

additional elements of the claims do not amount to significantly more than
that judicial exception. As such, the claims as recited are patent-ineligible.
Appellant’s Additional Arguments
Appellant argues the Examiner should not have concluded the claimed
concept was abstract unless it is similar to a concept courts previously
identified as an abstract idea, and that it is appropriate to compare the claim
in question to claims found to be directed to an abstract idea in a previous
court decision. App. Br. 17. Section 101 rejections are reviewable de novo,
however, and we have shown above that case law supports the conclusion
that the claims here recite abstract ideas. See Trading Technologies, OIP,
and BuySAFE, supra.
Appellant argues the claim does not recite “agreements in the form of
contracts, legal obligations, and business relations.” App. Br. 17–18. As
discussed previously, the judicial exception recited in the claims is an
abstract idea in the category of “certain methods of organizing human
activity” in the subcategories of “fundamental economic practices” and
“commercial transactions.” See 84 Fed. Reg. 52; MPEP § 2106.04(a)(2) I
and II.
In connection with the Examiner’s finding that the claims recite a
“fundamental economic practice,” Appellant argues the Examiner has not
shown that “submitting a shipping inquiry” is “fundamental” meaning
foundational or basic, when the claims are considered as a whole. App. Br.
18. We note there is evidence in the record to support the Examiner’s
finding that the claims recite a “fundamental economic practice.” See Barni
1:42–52; Kornacki ¶¶ 2, 4. Appellant’s argument does not refute that
evidence. Arguments of counsel cannot take the place of factually supported
Appeal 2017-011655
Application 13/911,418

18

objective evidence. In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant argues even if “submitting a shipping inquiry” were to be
reasonably interpreted as a fundamental economic practice, there is no per se
rule that all methods of this kind are abstract ideas that are judicially
recognized exceptions, and the Examiner has not provided precedent to
support such a conclusion. We previously noted that the record supports the
Examiner’s conclusion that the claims recite a fundamental economic
practice. See Barni 1:42–52; Kornacki ¶¶ 2, 4; Trading Technologies, OIP,
and BuySAFE, supra.
Appellant argues that the claimed steps of “identifying,” “providing,”
“assigning,” and “selecting” do not fall within the categories of computer
functions that are recognized as well-understood, routine, and conventional
by the July 2015 Update: Subject Matter Eligibility, and that the Examiner’s
findings were conclusory on this matter. App. Br. 19; see also MPEP
§ 2106.05(d) II. As we have indicated, receiving, storing and transmitting
data are well-known functions of a computer, and computers are known to
simplify computational tasks. See Alice, Flook, and Bancorp, supra.
Appellant argues even if the claims recite generic computer
components, they are able to perform non-generic functions that can amount
to significantly more than an abstract idea and thus qualify as patent-eligible
subject matter. App. Br. 20. Although this may be true in theory, Appellant
has not demonstrated these claims perform non-generic functions for the
reasons explained.
Appellant next argues that the claimed solution is necessarily rooted
in computer technology under DDR Holdings LLC v. Hotels.com LP, 773
Appeal 2017-011655
Application 13/911,418

19

F.3d 1245 (Fed. Cir. 2014). We do not agree that Appellant has shown these
claims are necessarily rooted in computer technology, especially considering
that the only mention of computer components is in the non-limiting
preambles of the claims.
Appellant argues the claims improve an existing technological process
by providing a versatile, customizable shipping estimation tool where
calculation of shipping costs is complicated and numerous things need to be
considered, citing for support Bascom Global Internet Services Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). The claims do not mention
anything about versatility or customizability, or what needs to be considered
in calculating shipping costs beyond weight and dimensions that makes the
computation more difficult. Limitations not appearing in the claims cannot
be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA
1982). Appellant also has not shown the claims provide a technical solution
to a technical problem, as opposed to a business solution to a business
problem. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
Appellant argues that an inventive concept can be found in the non-
generic arrangement of known, conventional pieces. App. Br. 22. Appellant
does not indicate what non-generic arrangement or combination of features
is recited in the claims allegedly provides such an inventive concept. For
reasons explained, many of the recited features appear to have no relation to
one another other than, perhaps, they are steps or functions performed to
prepare for the same shipping transaction. For example, the “identifying . . .
[a] logistics criterion” and “calculating a shipping estimate for the shipping
inquiry” are not used in “submitting a shipping inquiry” in the claims.
Appeal 2017-011655
Application 13/911,418

20

Appellant argues the Examiner only analyzed the “assigning a higher
weighted value” and not the “assigning a lower weighted value” in the
claims. App. Br. 22–23. The “assigning” steps are conditional and mutually
exclusive possibilities, so under the principle of broadest reasonable
interpretation, the Examiner only needed to analyze one of the two
possibilities. In any case, analysis of “assigning a lower weighted value”
would be similar.
Appellant contends the claims include different techniques from what
shipping estimation websites have done before, citing for support McRO Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
Again, the preamble of the claims has not been shown to be limiting, so any
such different techniques are not technical ones performed by a computer or
other technical device. The only technical features in the claims are the
“database” and “link” which are recited generically at a high level of
generality, which is insufficient to transform the judicial exception into
patent-eligible subject matter.

DECISION
We affirm the Examiner’s rejection of claims 1–25 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED