Ex Parte Dearing et al

Patent Trial and Appeal Board

Aug 23, 2017

11524352 (P.T.A.B. Aug. 23, 2017)

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.
11/524,352 09/21/2006 Stephen M. Dearing 08049.1048-00000 7938
22852 7590 08/25/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
FLYNN, KEVIN H
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. DEARING
and
GERALD J. JAMULA
Appeal 2016-002552
Application 11/524,352
Technology Center 3600
Before CARLA M. KRIVAK, JASON V. MORGAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—4, 6—15, 18—22, 24—31, and 33—50. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appeal 2016-002552
Application 11/524,352
STATEMENT OF THE CASE
Appellants’ invention is directed to “methods and systems for
providing a delivery service subscriber with the capability to analyze and
evaluate mail flow and mail delivery statistics on an aggregate basis” (Spec.
12).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A computer-implemented method, comprising:
obtaining, with a computer, data associated with a plurality of
shipments, the shipments including one or more delivery items,
the delivery items being associated with corresponding item
identifiers, and the obtained data comprising:
(i) first identifiers for the plurality of shipments captured at one
or more physical locations within the item delivery
system; and
(ii) second identifiers for the plurality of shipments extracted
from an electronic data file associated with the one or
more delivery items, the electronic data file being
obtained prior to an introduction of the plurality of
shipments into the item delivery system;
for at least one of the shipments, determining, with the computer,
errors in the obtained data by analyzing a portion of the second
identifiers corresponding to the at least one shipment;
based on the determined errors, normalizing, with the computer, at
least a portion of the obtained data in the item delivery system;
receiving, with a data input device, a request for a set of item
delivery statistics from a subscribed user of the item delivery
system, wherein the request includes a specified subscriber
identifier identifying the subscribed user and user-selected
options specifying one or more aggregation criteria for
generating the item delivery statistics;
identifying, with the computer, a plurality of shipment identifiers
identifying shipments having different originations or
destinations, the plurality of shipment identifiers having the
specified subscriber identifier in common;
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Application 11/524,352
aggregating, with the computer, portions of the normalized data
associated with the identified shipment identifiers into a single
set of aggregated data;
determining, with the computer, the requested set of item delivery
statistics based on the single set of aggregated data and the user
selected options; and
generating, with the computer, a report including the requested set
of item delivery statistics, the report including a graphic display
section providing an aggregated view of the set of item delivery
statistics and a user interface section allowing a user to filter the
item delivery statistics, the aggregated view being automatically
adjusted according to the filtered item delivery statistics.
REFERENCES and REJECTIONS
The Examiner rejected claims 1—4, 6—15, 18—22, 24—31, and 33—50
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
The Examiner rejected claims 1, 3, 4, 6—15, 18—20, 22, 24—31, 33, 35—
42, 46, 49, and 50 under 35 U.S.C. § 103(a) based upon the teachings of
Kadaba (US 2003/0236688 Al; pub. Dec. 25, 2003) and Ashaari (US
2004/0188522 Al; pub. Sept. 30, 2004).
The Examiner rejected claims 2, 21, 34, 43—45 under 35 U.S.C.
§ 103(a) based upon the teachings of Kadaba, Ashaari, and Olsson (US
2004/0205184 Al; pub. Oct. 14, 2004).
The Examiner rejected claims 47 and 48 under 35 U.S.C.
§ 103(a) based upon the teachings of Kadaba, Ashaari, and Underwood (US
6,259,354; iss. July 10, 2001).
ANALYSIS
Rejection under 35 U.S.C. § 101
Appellants contend the Examiner erred in finding Appellants’ claimed
invention is directed to non-statutory subject matter (App. Br. 18—25).
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Application 11/524,352
Appellants assert their invention is directed to statutory subject matter and is
not an abstract idea (App. Br. 19), they do not preempt every application of
“the alleged abstract idea of ‘aggregating statistics’” (App. Br. 21), the
claims are “inextricably tied to computer networks rather than ethereal ideas
or mental processes” (App. Br. 22), and their invention solves a technical
problem using a technical solution (App. Br. 23). We do not agree.
We agree with and adopt the Examiner’s findings as our own (see
Final Act. 2—3; Ans. 2-4). Particularly, we agree with the Examiner
Appellants’ claims merely perform various mathematical calculations using
a generic processing unit and the mathematical calculations are directed to
aggregating statistics (an abstract idea) (Ans. 2).
Appellants’ arguments merely recite the claim limitations and state
because they are directed to a computer-implemented method, item delivery
system, analyzing and evaluating a flow of mailing pieces, and a computer
readable medium, the Examiner has not and cannot provide any rational
basis for asserting the claims are directed to a fundamental business practice
much less an abstract idea (App. Br. 20-21 (citing Diamond v. Diehr, 450
U.S. 175 (1981)). We agree with the Examiner, however, that Diamond v.
Diehr is not pertinent to Appellants’ argument as “Diehr resulted in a
physical transformation, of which rearrangement of data does not quality”
(Ans. 2—3). We agree with the Examiner that the claims are directed to
collecting, analyzing, and displaying statistics, which is an abstract idea.
See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097—98
(Fed. Cir. 2016) (“the practices of collecting, analyzing, and displaying data,
with nothing more, are practices whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas”) (quotation
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Application 11/524,352
omitted); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146
(Fed. Cir. 2016) (“we continue to treat analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category”)
(quotation omitted); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016) (“Merely requiring the selection and manipulation of
information—provide a ‘humanly comprehensible’ amount of information
useful for users — by itself does not transform the otherwise-abstract
processes of information collection and analysis”) (citation omitted).
Appellants argue their claims solve “a technical problem using a
technical solution and is thus directed to statutory subject matter under
§ 101,” and include normalizing, aggregating, and automatically adjusting
the aggregated data to be displayed (App. Br. 22—23). We do not agree. As
the Examiner finds, determining errors, normalizing data, and creating a
report are “part of the abstract idea, and are merely directed to mathematical
manipulation of the underlying data set” (Ans. 3). That is, there is no
technical problem being solved; rather, the claims are merely directed to
data gathering and displaying the data (statistics)—basically, manipulating
data from one form to another, and displaying the results. See In re Miller,
418 F.2d 1392 (CCPA 1969) (holding that claims directed to a mere
arrangement of printed matter are patent-ineligible under § 101); In re
Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In reNgai, 367 F.3d 1336
(Fed. Cir. 2004) (holding that claims directed to conveying data or meaning
to a human reader rather than establishing a functional relationship between
recorded data and a computer system are patent-ineligible under § 101).
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Application 11/524,352
Appellants also argue the claims amount to “significantly more”
because “Appellants’ claims recite subject matter that distinguishes the prior
art of record.” App. Br. 24. This improperly conflates the test for § 101
with the separate tests for §§102 and 103. E.g., Genetic Techs. Ltd. v.
MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“under the Mayo!Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”); Diehr, 450 U.S.
at 188—89 (“The ‘novelty’ of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.”).
Thus, we sustain the Examiner’s rejection of claims 1—4, 6—15, 18—22,
24—31, and 35—50 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. §103
The Examiner finds claims 1—4, 6—15, 18—22, 24—31, 33—46, 49, and
50 obvious over combinations of Kadaba, Ashaari, and Olsson. Particularly,
the Examiner finds Ashaari teaches, at stage 1220 of Figure 11, “the system
attempts to match the encoded shipment identifier with the shipment
identifier of previously received electronic mailing information” (Ans. 5).
Thus, the Examiner finds Ashaari discloses “1) determining an error if a
match is not found, and 2) in response to the error, initiating further
processing to find a match, which results in proper processing,” thus
normalizing “at least a portion of the obtained data” (id.). We do not agree.
As Appellants contend, Ashaari attempts to match an encoded
shipment identifier with a shipment identifier and generates an error when a
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match is not found (App. Br. 26—27). However, Ashaari does not teach or
suggest modifying any information in response to the generated error as
asserted by the Examiner (App. Br. 27 (arguing Ashaari does not disclose
determining errors, and based on those errors, normalizing a portion of the
data, as claimed)). We therefore agree with Appellants.
Thus, we do not sustain the Examiner’s rejection of claims 1, 3, 4, 6—
15, 18—20, 22, 24—31, 33, 35—42, 46, 49, and 50 as obvious over the
combined teachings of Kadaba and Ashaari, and claims 2, 21, 34, 43—45, 47,
and 48 over Kadaba, Ashaari, Olsson, and Underwood.
DECISION
The Examiner’s decision rejecting claims 1—4, 6—15, 18—22, 24—31,
and 33—50 under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 1—4, 6—15, 18—22, 24—31,
and 33—50 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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