Abel, Kenton

Patent Trials and Appeals Board

Feb 25, 2020

13049873 - (D) (P.T.A.B. Feb. 25, 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.
13/049,873 03/16/2011 Kenton Abel KA-2010-01 1543
7590 02/25/2020
Kenton Abel
3259 Cabo Blanco Dr.
Hacienda Heights, CA 91745
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
02/25/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTON ABEL
Appeal 2018-002666
Application 13/049,873
Technology Center 3600
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. An oral hearing was held on February 11, 2020. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
inventor, Kenton Abel. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
The Application is directed to generating a mailer that “allows for a
user to send and receive physical letters and/or goods to another user without
divulging personal information.” Spec. ¶ 5. Claims 1–3 are pending.
Appeal Br. 5. Claim 1, the sole independent claim, is reproduced below for
reference (emphasis, bracketed lettering, and some formatting added):
1. A method for generating a mailer, comprising: a) a system
comprising a computer open to receiving electronic
communications from a plurality of sending users and a plurality
of receiving users, b) a database within the system for storing
personal information of each of the plurality of receiving users,
wherein the personal information comprises a physical mailing
address,
c) receiving an electronic communication from a sending
user for initiating a mailer demand for a receiving user,
d) performing in any order, using the computer system:
i) sending user inputting sufficient information to
uniquely indentify a receiving user;
ii) checking for permissions in the database for the
initiated mailer demand to use the receiving user’s physical
mailing address;
iii) sending user inputting sufficient information to
generate a mailer;
e) combining sending user’s information with receiving
user’s physical mailing address to form a completed mailer
demand,
f) physically generating the mailer according to the mailer
demand,
g) physically delivering the mailer to a postal authority
with sufficient postage for delivery of the mailer to the receiving
user,
[h)] wherein each receiving user controls one or more
permissions for each sending user to utilize the receiving user’s
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personal information prior to the sending user initiating the
mailer demand,
[i)] wherein the sending user is not notified of the
receiving user’s personal information to which the sending user
has not been given permission by the receiving user.
Response to Notification of Non-Compliant Appeal Brief, filed March 9,
2017.
References and Rejections
Claims 1–3 are rejected under 35 U.S.C. § 101 as being patent
ineligible. Final Act. 9.
Claims 1–3 are rejected under 35 U.S.C. § 103 as being unpatentable
over Storch2. Final Act. 19.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss each
of the rejections, in turn.

Patent Eligibility
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims are directed to an abstract idea and do not
“recite additional elements that amount to ‘significantly more’ than the
abstract idea itself.” Final Act. 14 (emphasis omitted); see also Alice Corp.
v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step

2 Storch et al., US 2007/0124212 A1; May 31, 2007 (“Storch”).
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framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).
In 2019, the U.S. Patent and Trademark Office (USPTO) published
revised guidance on the application of § 101 (“Guidance”). See 2019
Revised Patent Subject Matter Eligibility Guidance Notice, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Notice”); see also USPTO, October 2019 Update: Subject
Matter Eligibility (“October Update”) (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Notice at 51; see also October Update at 1.
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
Notice, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, does the Office then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Notice, 84 Fed. Reg. at 52–56
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We are not persuaded the Examiner’s eligibility rejection is in error.
We adopt the Examiner’s findings and conclusions as our own, to the extent
consistent with our analysis herein. We add the following primarily for
emphasis and clarification with respect to the Guidance.

A. Step 2A, Prong One
Pursuant to Step 2A, Prong One of the Guidance, we agree with the
Examiner that claim 1 recites an abstract idea, and describes “generating [a]
mailer defined by a set of rules for controlling the sender’s access to the
receiver’s mailing address.” See Final Act. 10; see also Abstract. Claim 1
recites steps c), d)i), and d)iii) for communicating information to request a
mailer (e.g., a letter or postcard), and steps d)ii) and e) for using the
information to create the mailer. Claim 1 further recites steps f) and g) for
physically generating and delivering the mailer. These limitations, for
requesting, creating, and delivering a mailer, reasonably can be
characterized as reciting “fundamental economic principles or practices,”
“commercial or legal interactions” (such as creating the “agreements in the
form of contracts; legal obligations” of a mailer), and “managing personal
behavior or relationships or interactions between people” (such as following
rules or instructions), which are “[c]ertain methods of organizing human
activity.” Notice, 84 Fed. Reg. at 52; October Update at 5; see also Secured
Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017)
(“[T]he claims embrace the abstract idea of using a marking affixed to the
outside of a mail object to communicate information about the mail object,
i.e., the sender, recipient, and contents of the mail object.”).
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Claim 1 further recites wherein clauses [h)] and [i)]: “wherein each
receiving user controls one or more permissions for each sending user to
utilize the receiving user’s personal information prior to the sending user
initiating the mailer demand,” and “wherein the sending user is not notified
of the receiving user’s personal information to which the sending user has
not been given permission by the receiving user.” These limitations,
regarding a user’s control over personal information shared with another
user, reasonably can be characterized as reciting “managing personal
behavior or relationships or interactions between people” (such as social
activities and following rules or instructions), which are “[c]ertain methods
of organizing human activity.” Notice, 84 Fed. Reg. at 52; October Update
at 6.
Additionally, limitations c), d)i), d)ii), d)iii), e), [h)], and [i)] relate to
communicating and reviewing information, and reasonably can be
characterized as “[m]ental processes” that entail steps of “observation,
evaluation, judgment, opinion.” Notice, 84 Fed. Reg. at 52; see also
October Update at 8.3
Appellant argues the “invention is not found in the prior art and is not
a fundamental economic practice,” as “[t]he method of personal control of
information in the generation of mailer is not a fundamental economic
practice long prevalent in our system of commerce.” Appeal Br. 14

3 Separately, we note that in one case—although the Supreme Court later
reversed because the USPS was not a party able to seek review under the
relevant statute—the Federal Circuit “agree[d] with the Board” that
“relaying mailing address data” was an “abstract idea.” Return Mail, Inc. v.
United States Postal Serv., 868 F.3d 1350, 1368 (Fed. Cir. 2017), rev’d, 139
S. Ct. 1853 (2019).
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(quotations omitted). We are not persuaded the Examiner errs in
determining claim 1 recites a judicial exception. See Ans. 4, 5. Appellant
does not respond to the Examiner’s citation of Secured Mail (Ans. 5), which
held that the claimed “communicating information about a mail object” was
an abstract process, and we see no reason why the claimed control over
personal information relating to a mail object would yield a different
eligibility result. Secured Mail, 873 F.3d at 911; see also October Update at
5 (“‘[F]undamental economic principles or practices,’ . . . describe subject
matter relating to the economy and commerce,” and include “using a
marking affixed to the outside of a mail object to communicate information
about the mail object, i.e., the sender, recipient, and contents of the mail
object.”). Further, as discussed above, we determine the limitations,
including wherein clauses [h)] and [i)], recite the “managing personal
behavior or relationships or interactions between people” sub-category of the
judicial exception of certain methods of organizing human activity, as well
as mental processes. Notice, 84 Fed. Reg. at 52.
Accordingly, we conclude the claims recite a judicial exception under
Prong One of the Guidance. See id. at 54.

B. Step 2A, Prong Two
Appellant argues the Examiner’s rejection is in error, because “the
claims are narrow in scope, directed to a new way of generat[ing] mail.”
Appeal Br. 13. Appellant further argues “the claims are particularly directed
to certain operations that can only occur on computer systems, and are not
mere computer implementations of normal human activities.” Id. at 15.
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We are not persuaded the Examiner’s rejection is in error under Prong
Two of Step 2A of the Guidance. See Final Act. 3; October Update at 13.
That the claims are narrow or use computer systems is insufficient to remove
them from the realm of patent ineligibility. See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”); BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018) (“[A] claim is not
patent eligible merely because it applies an abstract idea in a narrow way.”).
The features relied on by Appellant, such as wherein clauses [h)] and [i)],
are part of the judicial exception discussed above in Prong One, and do not
comprise additional elements, individually or in combination, that integrate
the exception into a practical application. See Ans. 3.
Claim 1 recites, as additional elements, computer- and database-
related limitations a) and b), which the Examiner finds “amount to no more
than: mere instructions to implement the idea on a computer.” Final Act. 14
(emphasis omitted). We agree. See Spec. ¶ 2. Other than the recitation of
“electronic,” the recited method steps, such as checking a database
(limitation d)ii)), could be performed by a human using pen and paper. See
Ans. 5; Secured Mail Sols., 873 F.3d at 910 (“No special rules or details of
the computers, databases, printers, or scanners are recited.”). Thus, the
recited hardware limitations a) and b) “merely use[] a computer as a tool to
perform an abstract idea.” Notice, 84 Fed. Reg. at 55.
Claim 1 further recites physical steps f) and g): “physically
generating the mailer according to the mailer demand,” and “physically
delivering the mailer to a postal authority with sufficient postage for delivery
of the mailer to the receiving user.” These steps describe the physical
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creation and delivery of a mailer. Even if considered as additional elements
rather than part of the abstract idea, the limitations do no more than link the
underlying abstract idea to a field of use (i.e., the field of sending mail rather
than, for example, an email) or add insignificant extra-solution activity to the
judicial exception (i.e., sending the intended mail). See Notice, 84 Fed. Reg.
at 55.
Accordingly, we determine the additional elements of claim 1,
individually and in combination, do not integrate the judicial exception into
a practical application. See Notice, 84 Fed. Reg. at 54. As the “claim recites
a judicial exception and fails to integrate the exception into a practical
application” (id. at 51), “the claim is directed to the . . . judicial exception”
(id. at 54).

C. Step 2B
Pursuant to Step 2B of the Guidance, we agree with the Examiner that
the additional elements, individually and in combination, recite
“conventional steps for generating a mailer (postcard).” Final Act. 14. The
Examiner’s determination is reasonable in view of the record before us. See
Spec. ¶ 7 (“Systems also currently exist for sending goods from an
electronic command.”); Spec. ¶¶ 2–6, 10, 22; see also Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); Secured Mail Sols.,
873 F.3d at 912 (“Some of the claim elements, such as submitting a mail
object to a mail carrier or affixing information to a mail object, are routine to
persons that have mailed a letter.”). Thus, we find independent claim 1’s
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claim elements, individually and as an ordered combination, do not provide
significantly more than the recited judicial exception.
We agree with the Examiner that independent claim 1 is patent
ineligible. Appellant does not present additional substantive arguments for
the remaining claims. See Appeal Br. 13–15. Accordingly, we do not find
the Examiner’s 35 U.S.C. § 101 rejection of claims 1–3 is in error.

Obviousness
The Examiner finds Storch teaches all limitations of independent
claim 1, other than limitation [h)], which recites “wherein each receiving
user controls one or more permissions for each sending user to utilize the
receiving user’s personal information prior to the sending user initiating the
mailer demand.” Ans. 7. Storch, however, discloses a receiving user can
“deny permission to deliver the gift through a response to the e-mail request
and by failing to respond to the e-mail request within a predetermined time
period (such as within ten days, for example).” Storch ¶ 39. The Examiner
finds “[i]t would have been obvious to allow the receiving user to respond
prior to initiat[ing] the whole mail demand to save time and work request
process so that the sending user does not have to wait 10 days for a ‘no’
response to the request which is insufficient.” Ans. 7 (emphasis omitted).4
Appellant argues the Examiner’s rejection is in error:
The Office’s reasoning does not qualify as a sufficient reason to
combine Storch with the missing elements. Following the
teaching of Storch, a receiving user cannot know a sending user

4 In the event of further prosecution, the Examiner may wish to determine
whether the Specification provides sufficient written description support for
the “prior to” claim recitation.
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will be initiating a mailer demand and has no way of granting
approval prior to such a demand. The Office has not established
how a person of ordinary skill in the art would modify Storch to
allow a receiving user to grant permissions prior to a mailing
demand.
Appeal Br. 18. Appellant also argues that the Examiner relies solely on
hindsight to modify Storch. Id.; Reply Br. 5.
We are persuaded the Examiner errs. We agree with Appellant that
the Examiner fails to provide sufficient rationale for why or how a person of
ordinary skill in the art would have been motivated to modify Storch absent
hindsight. As such, we find the Examiner does not provide articulated
reasoning sufficient to support the conclusion of obviousness. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We do not sustain the Examiner’s obviousness rejection of
independent claim 1, or of claims 2 and 3 which depend therefrom.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–3 101 Eligibility 1–3
1–3 103 Storch 1–3
Overall
Outcome
1–3

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TIME PERIOD FOR RESPONSE
No time 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