Brian Colodny et al.

Patent Trials and Appeals Board

Aug 12, 2019

14497095 - (D) (P.T.A.B. Aug. 12, 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.
14/497,095 09/25/2014 Brian Colodny 2501-P005 8907
68803 7590 08/12/2019
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
TILGDocket@yahoo.com
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN COLODNY and MICHAEL MCLAUGHLIN1
____________________

Appeal 2018-005764
Application 14/497,095
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1–20, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Chargerback, Inc. App.
Br. 1.
Appeal 2018-005764
Application 14/497,095

2
BACKGROUND2
Appellants’ disclosed embodiments and claimed invention relate to
allowing establishments, such as hotels and airlines, “to efficiently transfer
found items between different locations of the same establishment.” Spec.
¶ 4. Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for the transfer of found items between
different establishment locations associated with an entity,
comprising:
[(1)] a lost item database storing a record for each of a
plurality of lost items, wherein, for each lost item, the
record having at least a lost item description, a lost item
establishment location, and a destination establishment
location;
[(2)] a found item database including a record for each
of a plurality of found items, wherein, for each found
item, the record having at least a found item description
and a found item establishment location;
[(3)] at least one server configured to search the found
item database for a found item that matches a lost item in
the lost item database; and
[(4)] a transfer manager configured to manage transfer
of the found item from the found item establishment
location to the destination establishment location,
[(5)] wherein the different establishment locations
associated with the entity include the found item
establishment location and the destination establishment

2 Throughout this Decision we have considered the Specification filed
September 25, 2014 (“Spec.”), the Non-Final Rejection mailed August 25,
2017 (“Non-Final Act.”), the Appeal Brief filed November 27, 2017
(“Appeal Br.”), the Examiner’s Answer mailed April 13, 2018 (“Ans.”), and
the Reply Brief filed May 14, 2018 (“Reply Br.”).
Appeal 2018-005764
Application 14/497,095

3
location, and wherein the found item database is updated
to reflect the current location of the found item in
accordance with transfer of the found item from the
found item establishment location to the destination
establishment location.
Claims App’x A-1 (limitation numbering added).
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 3–7.
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over US 2014/0327518 A1, published Nov. 6, 2014 (“Loutit”).
Non-Final Act. 8–15.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Appeal 2018-005764
Application 14/497,095

4
Rejection of Claims 1–20 under 35 U.S.C. § 1033
The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as obvious
over Loutit. Non-Final Act. 8–15.
For independent claim 1, Appellants argue that Loutit does not teach
or suggest limitation (1)—“a lost item database storing a record for each of a
plurality of lost items, wherein, for each lost item, the record having at least
a lost item description, a lost item establishment location, and a destination
establishment location”—as required by each of the claims.4 Appellants
argue that Loutit does not teach limitation (1) because “the lost-item record
of Loutit does not include a destination establishment location.” Appeal
Br. 7. Instead, Loutit “merely teaches using the location sensor of the
mobile device to record a location of the mobile device . . . to identify the
location where the . . . lost item was lost.” Id.
In response, the Examiner first recognizes “Paragraph [0032] of
Appellant’s specification discloses wherein a destination location may be
included to indicate a location of where the customer would like to pick up
or have the found item transferred to.” Ans. 4. Then the Examiner explains
that “Paragraph [0043] [of Loutit] discloses a lost item record having a
unique identifier description, image, category, date of the lost item, flag
indicating whether the item has been found or the record is closed . . .

3 In the heading for these arguments, Appellants state “claims 1–22 are not
anticipated by Loutit.” Appeal Br. 6. Because claims 21 and 22 are not
mentioned in the Appeal Brief (see Appeal Br. 6–29), only claims 1–20 are
pending in this application (see Claims App’x), and the rejection at issue is
obviousness, not anticipation (see Non-Final Act. 8), we treat this statement
as a typographical error.
4 Both claims 10 and 17 recite the substantively similar “lost item report
including at least a lost item description and a destination location.”
Appeal 2018-005764
Application 14/497,095

5
pointer to the venue at which the item was found, geographic location, and
flag indicating whether the found item has been claimed.” Id. at 5.
According to the Examiner, “it is clear from the aforementioned citations [of
Loutit ¶¶ 42–43] that the applied prior art reference Loutit discloses the
features of claim 1 as argued by Appellant.” Id. at 7.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Loutit
teach or suggest the lost item record includes a destination location. See
Reply Br. 1–2. The portion of Loutit relied upon by the Examiner describes
a “lost item data repository 24,” including
a plurality of lost item records, each lost . . . item record having
a unique identifier a description in prose of the lost item, an
image of the lost item, a category of the lost item, a subcategory
of the lost item, a date that the lost item was reported, comments
on the lost item, a flag indicating whether the lost item has been
found or the record is closed, a value indicative of whether a user
has paid to have the lost item featured prominently, a pointer to
a user profile record of a user who reported the lost item, and a
pointer to a venue at which the item was reported lost (or such
pointers, if included, may be present in corresponding records
[of] the other repositories).
Ans. 6 (emphasizing this portion of Loutit ¶ 43).
Nothing in this language, or anywhere else in the cited portions of
Loutit, makes any reference to a destination location for the lost item. And
the Examiner does not explain how a person of ordinary skill in the art
would find it obvious to include, in the lost item record, such a destination
location. The Examiner, therefore, does not sufficiently explain why or how
a person of ordinary skill in the art would find obvious this difference
between Loutit’s disclosure and the claimed language. See Non-Final Act.
8; Ans. 5–7.
Appeal 2018-005764
Application 14/497,095

6
Because this determination resolves the § 103 rejection for all pending
claims, we need not address Appellants’ other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
Rejection of Claims 1–20 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
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 each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” 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 claims 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).
Appeal 2018-005764
Application 14/497,095

7
The Patent Office recently issued guidance regarding this framework.
See USPTO, 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 whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites 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.” Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the § 101 rejection, Appellants argue claims 1–20
together as a group. See App. Br. 5–6; Reply Br. 2–3. Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our discussion to
independent claim 1. Independent claims 8 and 15 and dependent claims 2–
7, 9–14, and 16–20 stand or fall with independent claim 1.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
The Judicial Exception—Abstract Idea
The Examiner determined the claims are directed to “systems and
methods for the efficient transfer of found items between different locations
of the same establishment, wherein the ability to efficiently record, track and
Appeal 2018-005764
Application 14/497,095

8
transfer items may be provided.” Ans. 11. According to the Examiner, this
is an abstract idea similar to those found to encompass “certain methods of
organizing human activity.” Non-Final Act. 3–5 (comparing the
application’s claims to those at issue in Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011); Content Extraction and
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014);
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016);
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332
(Fed. Cir. 2017); Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d
1315 (Fed. Cir. 2017)). For the reasons explained below, we agree that the
claims recite an abstract idea.
As quoted and enumerated above, claim 1 includes five main
limitations. These limitations recite a system for storing information about
lost items (limitation (1)), storing information about found items (limitation
(2)), searching for a match between the lost and found items (limitation (3)),
managing the transfer of a found item to a different location (limitation (4)),
and updating the stored information about where the found item is located
(limitation (5)). Limitations (1)–(5) of claim 1, under the broadest
reasonable interpretation,5 recite matching lost and found items and

5 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Appeal 2018-005764
Application 14/497,095

9
managing the transfer from one location of an establishment to a different
location of the same establishment. Matching lost and found items and
managing their transfer is a method of organizing human activity—a
longstanding practice of reuniting lost items and their owners. See Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018)
(describing, as an abstract idea, “the nontechnical human activity of passing
a note to a person who is in the middle of a meeting or conversation as
further illustrating the basic, longstanding practice that is the focus of the
claimed invention”); see also Appeal Br. 29 (“Here, the claims are directed
to matching lost and found at different establishment locations and the
transfer of found items between the different establishment locations of an
entity.”).
Moreover, each of limitations (1)–(5) recite a process that that people
can perform in their heads or using pen and paper. The recited process is not
meaningfully different from other processes that courts have determined are
mental processes. See, e.g., CyberSource, 654 F.3d at 1373 (determining
that a claim whose “steps can be performed in the human mind, or by a
human using a pen and paper” is directed to an unpatentable mental
process). This is true even though claim 1 recites that computer components
perform the claimed process. “Courts have examined claims that required
the use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015); 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
Appeal 2018-005764
Application 14/497,095

10
mental processes category unless the claim cannot practically be performed
in the mind.”).
We, therefore, conclude that claim 1 recites a method of organizing
human activity and also a mental process, each of which are listed in the
abstract idea groupings in the Revised Guidance. See Revised Guidance, 84
Fed. Reg. at 52. Claim 1 thus recites an abstract idea.
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “a lost item database,”
“a found item database,” “at least one server,” and “a transfer manager.”
Claims App’x A-1. Considering claim 1 as a whole, the additional elements
do not apply or use the abstract idea in a meaningful way such that the claim
as a whole is more than a drafting effort designed to monopolize the
exception. The Supreme Court guides that the “prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski v. Kappos561 U.S. 593,610–11
(Fed. Cir. 2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Appeal 2018-005764
Application 14/497,095

11
The Specification describes each of these elements as generic
components. For example, the Specification demonstrates the generic nature
of the recited databases because it does not describe any particular type of
database or explain how such database is implemented. See, e.g., Spec. ¶¶ 5,
34, 37, 54, 57, and 84 (referring to a “database” without elaboration). This
lack of description indicates the additional elements are sufficiently well-
known that the Specification does not need to describe the particulars of
such databases. Spec. ¶ 102 (“[W]ell-known methods, procedures,
components, and circuitry have not been described in detail to avoid
unnecessarily obscuring aspects of the present invention.”). The same is true
for the recited “server” and “transfer manager.” See, e.g., Spec. ¶¶ 5, 6, 25,
28, 96, 99 (referring to a “server” without elaboration), ¶¶ 5, 43, 44, 64, 96
(referring to a “transfer manager” without elaboration). Moreover, the
Specification refers to a generic “computing device” that “includes a
processor,” “stores media data . . . in a file system,” and includes “RAM,”
“ROM,” a “user input device . . . such as a button, keypad, dial, touch-
sensitive surface, etc.,” “a display,” and a “data bus.” Spec. ¶¶ 96–98.
Appellants’ arguments have not persuaded us otherwise. For
example, Appellants contend the “claimed solution is rooted in computer
technology in order to overcome the conventional difficulties associated
with lost and found items.” and “the claims clearly improve” the technical
field of “locating, transferring, and uniting lost items with an owner.”
Appeal Br. 29–30.
We are not persuaded that claim 1 improves the functioning of the
computer itself or any other technology or technical field. MPEP
§ 2106.05(a). In reviewing the record, we find the claims on appeal are
Appeal 2018-005764
Application 14/497,095

12
silent regarding specific limitations directed to an improved computer
system, processor, or database. Here, the claims focus on improving the
efficiency of returning lost items to their owners. See Spec. ¶ 23 (“[T]he
ability to efficiently record, track, and transfer items between the different
offices would assist in the facilitation of returning found items to its
owner.”). Improvement in efficiency such as this are expected when
automating a manual process using a computer. There is no indication that
any increase in efficiency or accuracy comes from the recited process itself.
See FairWarning IP. LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed.
Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.”)) (alteration in original);
see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x
1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[] not materially alter the
patent eligibility of the claimed subject matter.’” (alteration in original)
(citation omitted)). Therefore, we find Appellants’ claimed invention does
not provide a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
such as considered by the court in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014).
Appellants also contend the claims “do not preempt every application
of the lost and found as the Examiner would appear to suggest.” Appeal
Appeal 2018-005764
Application 14/497,095

13
Br. 31. This argument does not alter our § 101 analysis. Rather than
preemption, the Federal Circuit instructs that the Alice two-step analysis is
the test for whether claims are statutory. “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). “Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Id.
Accordingly, even in combination with all the other recited elements,
the addition of “a lost item database,” “a found item database,” “at least one
server,” and “a transfer manager” does not integrate the abstract idea into a
practical application because it does not impose any meaningful limits on
practicing the abstract idea. For these reasons, we determine that claim 1
does not integrate the recited abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
Appeal 2018-005764
Application 14/497,095

14
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum6).
Whether the additional elements (“a lost item database,” “a found
item database,” “at least one server,” and “a transfer manager”) are WURC
activity is a question of fact. 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 . . . is a factual determination.”).
On the record before us, Appellants have not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). Appellants do not point to any particular claimed element
that does not qualify as WURC.
In fact, Appellants’ Specification demonstrates the WURC nature of
these additional elements because it indicates they may be implemented with
generic devices. See, e.g., Spec. ¶¶ 95–102 (as discussed above); see also
Ans. 13–14. For these reasons, we conclude that claim 1, considered as a
whole, does not include an inventive concept.
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. We also sustain the Examiner’s § 101 rejection of claims 2–20, for
which Appellants rely on the same arguments made with respect to claim 1.
Appeal Br. 29–31; Reply Br. 6–10.

6 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
Appeal 2018-005764
Application 14/497,095

15
CONCLUSION
We conclude Appellants have demonstrated the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. § 103(a).
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. § 101.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s rejection of claims 1–20.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED