Ex Parte Dearing et al

Patent Trials and Appeals Board

Jun 25, 2019

13554476 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/554,476 07/20/2012
20995 7590 06/27/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Stephen M. Dearing
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
USPS.050A 8745
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. DEARING, KULDIP K. GOY AL,
GARY C. REBLIN, and MARGARET L. CHOINIERE
Appeal2017-008455
Application 13/554,476 1
Technology Center 3600
Before LARRY J. HUME, CATHERINE SHIANG, and
MICHAEL J. ENGLE, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-5, 7-21, and 43--45, which are all of the claims
pending in the application. Appellants have canceled claim 6, and
withdrawn claims 22--42 from consideration. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is United States Postal
Service of Washington, D.C. Br. 4.
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Application 13/554,476
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to a
"system and method for retrieving content associated with distribution
items." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A computerized method comprising:
receiving a digital image of a portion of a distribution
item captured via a computing device following a physical
delivery of the distribution item to a recipient identified on the
distribution item;
identifying, using a processor, an information item shown
in the digital image of the portion of the distribution item;
identifying a type for the information item;
extracting a data item from the digital image using the
type;
decoding the data item using the type to generate a set of
attributes of the distribution item;
retrieving, over a network accessed by the computing
device, content associated with a sender of the distribution item
using an attribute included in the set of attributes; and
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed Oct. 21,
2016); Examiner's Answer ("Ans.," mailed Feb. 21, 2017); Final Office
Action ("Final Act.," mailed May 26, 2016); and the original Specification
("Spec.," filed July 20, 2012) (claiming benefit of US 61/510,456, filed July
21, 2011, and US 61/512,343, filed July 27, 2011). Appellants did not file a
Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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causing display of the content to the recipient via a user
interface on the computing device, the content being associated
with the sender of the distribution item.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ulvr et al. ("Ulvr") us 5,602,382 Feb. 11, 1997
Rosenblatt et al. ("Rosenblatt") US 2010/0174599 Al July 8, 2010
Rejections on Appeal
RI. Claims 1-5, 7-21, and 43--45 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 7-13.
R2. Claims 1-5, 7-21, and 43--45 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 13-14.
R3. Claims 1-5, 7-21, and 43--45 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 14--18.
R4. Claims 1-5, 7-21, and 43--45 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination ofUlvr and Rosenblatt.
Final Act. 18-28.
CLAIM GROUPING
Based on Appellants' arguments (Br. 7-26) and our discretion under
37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible subject
matter Rejection RI of claims 1-5, 7-21, and 43--45 on the basis of
representative claim 1; we decide the appeal of written description Rejection
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R2 of claims 1-5, 7-21, and 43--45 on the basis of representative claim I;
we decide the appeal of indefiniteness Rejection R3 of claims 1-5, 7-21,
and 43--45 on the basis of representative claim 1; and we decide the appeal
of obviousness Rejection R4 of claims 1, 3-5, 7-12, 14, 16-21, and 43 on
the basis of representative claim 1. We address Rejection R4 of separately
argued claims 2, 13, 15, 44, and 45, infra.
Remaining claims in Rejections Rl-R4, not argued separately, stand
or fall with the respective independent claim from which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Based upon our de nova review of the record in light of recent
Revised Guidance4 with respect to patent-eligible subject matter rejections
under 35 U.S.C. § 101, we reverse Rejection RI of claims 1-5, 7-21, and
43--45 for the specific reasons discussed below. Further, based upon our
review of the record, we are persuaded by particular arguments advanced by
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Revised Guidance").
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Appellants with respect to Rejections R2 and R3 of claims 1-5, 7-21, and
43--45 under 35 U.S.C. § 112, first and second paragraphs, respectively, for
the specific reasons discussed below.
However, we disagree with Appellants' arguments with respect to
Rejection R4 of claims 1-5, 7-21, and 43--45 under 35 U.S.C. § I03(a) and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments.
We highlight and address specific findings and arguments regarding
claim 1 for emphasis as follows.
1. § 101 Rejection RI of Claims 1-5, 7-21, and 43--45
Issue 1
Appellants argue (Br. 7-16) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Under the US PTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
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An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.5
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the USPTO's patent-
eligibility analysis under § 101. MPEP § 2106.
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determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191 ); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
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inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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. at 221. "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely
requir[ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https ://www. govinfo. gov/ content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
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, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); 6 and
6 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
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(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 7
See Revised Guidance 52-53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look 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. 8
See Revised Guidance 56.
Step 2A(i)-Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
7 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
See Revised Guidance 52.
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) 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
9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
Section III.C of the Guidance for analyzing the claim should be followed.
See Revised Guidance, Section III.C.
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in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05([) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 5 5.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
10 See MPEP §§ 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while§§ 2106.05([), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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Step 2B - "Inventive Concept" or "Significantly More"
Under our reviewing courts' precedent, it is possible that a claim that
does not "integrate" a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element. 11 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
"significantly more" than the recited judicial exception ( e.g., because the
additional elements were unconventional in combination). 12 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself). 13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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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." See Revised Guidance,
III.B. 14
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine, or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
14 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo")).
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3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) 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
(b) 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.
Revised Guidance 56; see also Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that an
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the individual elements and
combination of elements do not amount to significantly more than the
exception itself, the claim is ineligible under Step 2B, and the claim should
be rejected for lack of subject matter eligibility.
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Analysis
Based upon our de nova review of the record in light of Revised
Guidance with respect to patent-eligible subject matter rejections under 35
U.S.C. § 101, wereversetherejectionofclaims 1-5, 7-21, and43--45 for
the specific reasons discussed below. We highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Step 1 - Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether the claim is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined the exemplary claim 1 is generally directed
to an "abstract idea ... [ and does] not seem to include any additional
elements that are sufficient to amount to significantly more than the judicial
exception." Final Act. 3. The Examiner further concluded:
Appellant's limitations reads upon an algorithm; therefore,
Appellant's limitations are directed to an abstract idea of
decoding data ( e.g. receiving, processing and storing).
Appellant's claim does not seem to include additional
elements that are sufficient to amount to significantly more than
the judicial exception because the additional elements when
considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea of
processing data.
Ans. 6 (footnote omitted).
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We find claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de nova, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
Claim 1 recites "a computerized method," wherein the method
includes the steps of:
(1) "[R ]eceiving a digital image of a portion of a
distribution item ... following a physical delivery of the
distribution item to a recipient identified on the distribution
item."
(2) "[I]dentifying ... an information item shown in the
digital image of the portion of the distribution item."
(3) "[I]dentifying a type for the information item."
( 4) "[E]xtracting a data item from the digital image using
the type."
(5) "[D]ecoding the data item using the type to generate a
set of attributes of the distribution item."
( 6) "[R ]etrieving ... content associated with a sender of
the distribution item using an attribute included in the set of
attributes."
(7) "[C]ausing display of the content to the recipient ...
the content being associated with the sender of the distribution
item."
Claims App'x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses the invention "relates to
using information affixed to a distribution item and methods and systems of
processing distribution items using information affixed to a distribution item
to link recipients with additional content and/or services associated with the
distribution item." Spec. ,r 2.
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Appellants' Abstract provides additional description of the invention:
Systems, methods and apparatus are disclosed for
providing content associated with an information item on a
distribution item using a computing device. In one aspect a
method includes identifying an image of an information item on
a distribution item. The method further includes processing, in a
processor the image, to generate a data item determined by the
information item. The method further includes decoding the
data item to determine a set of attributes of the distribution
item. The method further includes retrieving content associated
with the distribution item using at least one of the attributes in
the set of attributes. The method further includes delivering
content associated with the distribution item.
Spec. 77.
Under the broadest reasonable interpretation standard, 15 we conclude
the claim as a whole recites steps that would ordinarily occur when
analyzing and processing data associated with processing distribution items
using information affixed to a distribution item. See Ans. 6. For example,
"receiving [data]" (step (1)) and "displaying [data]" (step (7)) would be steps
in most methods for processing and displaying data. Also, "identifying an
information item" (step (2)), "identifying a type of the information item"
15 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).
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(step (3)), "extracting a data item" (step (4)), and "decoding the data item"
(step (5)) are common steps in a method for analyzing and processing data.
Thus, under Step 2A(i), we generally agree with the Examiner that
claim 1 recites an abstract idea, and we particularly conclude claim 1 recites
certain methods of organizing human activity. Specifically, claim 1 recites a
commercial interaction, i.e., advertising, marketing or sales activities or
behaviors, which we further note may be performed without a computer
using pen and paper. This type of activity, i.e., analyzing data in a
commercial interaction as exemplified by steps (2) through (5) includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011). 16
We conclude claim 1, under our Revised Guidance, recites a judicial
exception of certain methods of organizing human activity, i.e., a
16 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[t]he Board's
slight revision of its abstract idea analysis does not impact the patentability
analysis." Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
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commercial interaction ( advertising, marketing or sales activities or
behaviors), and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the "practical application" under Step 2A(ii) in which 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.
As to the specific limitations, we find limitation (1) ("receiving")
recites insignificant data gathering. See MPEP § 2106.05(g). Data
gathering, as performed by the steps or function in Appellants' claims, is a
classic example of insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd sub nom. Bilski v.
Kappas, 561 U.S. 593 (2010).
We also find limitation (7) ("displaying") recites insignificant post
solution activity. The Supreme Court guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented . . . ' [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92). On this record, we are of the view that
Appellants' claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
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In addition to the abstract steps recited in limitations (2}-(5) identified
in Step 2A(i), supra, claim 1 further recites limitation ( 6), i.e., "retrieving
... content associated with a sender of the distribution item using an
attribute included in the set of attributes."
For the reasons discussed below, we conclude limitation (6) integrates
the abstract idea into a practical application as determined under at least one
of the MPEP sections cited above. 17
Appellants argue:
The features recited in the claims specifically identify
how to take an information item located on a physically
delivered distribution item and efficiently extract data from the
information item to identify and provide content via a
computing device. No controlling jurisdiction has held that
efficiently identifying content from an information item
included on a distribution item and providing digital content to
bridge the gap between a physical distribution item and a
computing device, as recited in the claims, is directed to an
abstract idea. Only when the meaningful details recited in the
claims are ignored, does the claim begin to resemble
information processing claims that have been found ineligible
by the courts.
Br. 11-12.
In support of Appellants' arguments, we note the Specification
discloses:
[ A ]n image of an information item ... affixed to a distribution
item ... is received and/or captured using a computing device
17 See, e.g., MPEP § 2106.05(a) "Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field," and
§ 2106.05(e) "Other Meaningful Limitations."
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. . . [that] interprets the image to generate data determined by
the image of the information item ....
[T]he data is transmitted to a network service .... The
computing device ... receive[s] a response from the network
service[,] ... processes the message[,] and determines whether
a content indicator has been received .... If a content indicator
was received in the response from the network service ... the
content associated with the distribution item ... may be
displayed on the computing device.
Spec. ,r,r 68---69.
We find Appellants' argument persuasive that carrying out step ( 6)
("retrieving ... content associated with a sender of the distribution item
using an attribute included in the set of attributes") provides improvements
to the underlying technology or technical field, namely, systems for
"processing distribution items using information affixed to a distribution
item to link recipients with additional content and/ or services associated
with the distribution item," as set forth in paragraph 2 of the Specification.
See MPEP § 2106.05(a) or, alternatively,§ 2106.05(e) "Other Meaningful
Limitations."
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05( e ), which summarizes and relies upon our reviewing
court's holdings in Diamond v. Diehr, cited supra, and Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
( decision on remand from the Supreme Court, which had vacated the lower
court's prior holding of ineligibility in view of Bilski v. Kappas).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
of the (abstract idea) mathematical equation to the practical application of
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molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187).
In Classen, the Court held that, although the analysis step was an
abstract mental process that collected and compared known information, the
(practical application) immunization step was meaningful because it
integrated the results of the analysis into a specific and tangible method that
resulted in the method "moving from abstract scientific principle to specific
application." MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066-68).
We find these other meaningful limitations identified above provide a
technological improvement to systems for processing distribution items
using affixed information. Br. 12. Accordingly, we conclude, when the
claim is considered as a whole, the recited judicial exception is integrated
into a practical application as determined under either MPEP § § 2106. 06( a)
or 2106.05( e) cited above, such that claim 1 is patent-eligible. Because
claim 1 is directed to a patent-eligible concept, this concludes the patent-
eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the§ 101 rejection of claim 1, and grouped claims 2-5, 7-21, and
43--45 which stand therewith. See Claim Grouping, supra.
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2. § 112, First Paragraph, Written Description Rejection R2 of
Claims 1-5, 7-21, and 43--45
Issue 2
Appellants argue (Br. 16-17) the Examiner's rejection of claim 1
under 35 U.S.C. § 112, first paragraph, as lacking written description
support is in error. These contentions present us with the following issue:
Did the Examiner err in rejecting claim 1 's limitation "extracting a
data item from the digital image using the type" as lacking written
description support?
Analysis
The Examiner finds, "Applicant's Specification seems to be silent
[regarding] a 'nexus' between the process of 'extracting' based on a 'type.'
Applicant's Specification recites that it 'extracts' the encoded information,
without regard to type. Applicant's Specific[ation] seems to be silent [ with
respect to] the 'extraction' of data based on a 'type."' Final Act. 14.
Appellants contend paragraph 61 of the Specification provides written
description support for the limitation "extracting a data item from the digital
image using the type." Br. 16. In this regard, the Specification discloses:
[P]rocessing the information item [] may include
capturing an image of at least a portion of the distribution item
[] including the information item [] and performing image
processing to extract information from the image. If the
information item is an image, processing may include
performing image recognition .... [I]f an information item []
includes alphanumeric characters, processing may include
capturing an image of the information item [] and performing
optical character recognition (OCR) .... [I]f an information
item[] is stored within an RFID tag (not shown), processing
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may include reading the contents of the RFID tag with an RFID
tag reader in the computing device.
Spec. ,r 61.
In response to Appellants' contentions, the Examiner reiterates the
previous finding regarding the portions of the Specification referred to by
Appellants for the written description support and finds, "Appellant's
Specification seems to be silent [ as to] the necessary steps and/ or flowcharts
necessary to teach, extracting a data item [from] the digital image using the
type." Ans. 8 ( emphasis omitted).
We disagree with the Examiner because paragraph 61 of the
Specification discloses at least two different data item types for images (i.e.,
"alphanumerical characters" and "a barcode") and that "performing image
processing to extract information from the image" is based on the data item
type (e.g., "optical character recognition" for alphanumerical characters).
Therefore, we find that Appellants' Specification provides written
description support for the contested limitation in claim 1 of "extracting a
data item from the digital image using the type."
Accordingly, based upon the findings above regarding the
Specification's support for the contested limitation, on this record, we are
persuaded of error in the Examiner's finding that claim 1 lacks written
description support under§ 112, first paragraph. Accordingly, we reverse
the Examiner's written description Rejection R2 of claims 1-5, 7-21,
and 43--45.
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3. § 112, second paragraph, Rejection R3 of Claims 1-5, 7-21,
and 43--45
Issue 3
Appellants argue (Br. 17-19) the Examiner's rejection of claim 1
under 35 U.S.C. § 112, second paragraph, as being indefinite, is in error.
These contentions present us with the following issue:
Did the Examiner err in rejecting claim 1 allegedly because the
limitations "extracting a data item from the digital image using the type,"
"decoding the data item using the type," and "causing display of the content"
under§ 112, second paragraph, are indefinite?
Analysis
Similar to the written description Rejection R2, the Examiner finds:
Applicant's Specification recites [sic] that it "extracts" the
encoded information[] without regard to type. Applicant's
Specific [ at ion] seems to be silent [ regarding] the "extraction" of
data based on a "type." Therefore, the scope of the claim is
unclear and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention .
. . . [T]he scope of the claim is not clear where the Applicant
recites, "decoding the data item ... ;" however, the operational
distinction between "decoding" and "extract" is not clear ....
. . . [T]he claim recites "causing display of the content .... " The scope
of the claim is unclear since one of ordinary skill would not be able to
ascertain what the positive step is since "causing" represents state
rather than action.
Final Act. 15-17.
Appellants argue "extraction" of data based on a "type" is supported
by the Specification, and "the Specification as filed recites different types of
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information items and thus extracting data from an information item, as
recited in the claims, is a distinct and separate step from decoding the data
extracted," and refer to paragraph 61 of the Specification for support.
Br. 17. Appellants contend "the Office Action errs in stating that 'causing'
represents a state rather than an action [because c ]ausing is an action word
that generally means 'to be the cause of or 'bring about."' Br. 18.
Further, the Specification discloses:
The information item [] may be any of items described above, such as
an encoded value (e.g., a barcode), or as those described below ... a
computing device[] processes the information item .... [t]he
processing may include capturing information about the encoded
value, and decoding or preparing the encoded value so that it may be
used by a network service to determine information associated with
the mail piece as will be further described below ... [P]rocessing the
information item [] may include capturing an image of at least a
portion of the distribution item [] including the information item []
and performing image processing to extract information from the
image.
Spec. ,r 61.
In response to Appellants' arguments, the Examiner reiterates:
[O]nce a "type" has been identified, the Appellant then extracts
a data item from the digital image without having any prior
established nexus between the identified type to the extracted
data item. It is only "assumed" that the "extracted data" has a
relationship with the "identified type." Since Appellant's
Specification seems to be silent [sic] the necessary
steps/flowcharts to describe this feature, the scope of the claim
is unclear.
Ans. 9-10. Further, "[i]n reference to 'extracting' and 'decoding' .... [t]he
scope of the claim is unclear because the logical sequence of steps does not
seem to be proper." Ans. 11. Moreover, "[t]he Examiner would like to
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point out that Appellant's limitation is not a positive recitation of a method
step as Appellant's use of 'causing' represents [a] state rather than an
action." Ans. 13.
We disagree with the Examiner regarding the Specification being
unclear with respect to the extraction of data based on a type because, as we
found above under written description Rejection R2, paragraph 61 of the
Specification discloses and supports this limitation. Further, we disagree
with the Examiner regarding the lack of operational distinction between
"extracting" and "decoding" because Appellants' Specification at least in
paragraph 61 describes the distinction between "extracting" (i.e., "capturing
information about the encoded value") and "decoding" (i.e., "decoding or
preparing the encoded value so that it may be used by a network service"),
as well as the logical sequence between the two (i.e., "processing the
information item [] may include capturing an image of at least a portion of
the distribution item [] and performing image processing to extract
information from the image"). Still further, we disagree with the Examiner's
conclusion that "causing" represents a state instead of an action. See, e.g.,
Spec. ,r,r 63, 69.
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's conclusion the claim 1 limitations
"extracting a data item from the digital image using the type," "decoding the
data item using the type," and "causing display of the content" are indefinite
under§ 112, second paragraph, such that we do not sustain the Examiner's
indefiniteness rejection of claim 1. Accordingly, we reverse the Examiner's
indefiniteness Rejection R3 of claim 1 and grouped claims 2-5, 7-21, and
43--45, which stand therewith. See Claim Grouping, supra.
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4. § 103 Rejection R4 of Claims 1-5, 7-21, and 43--45
Issue 4
Appellants argue (Br. 19-26) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination ofUlvr and
Rosenblatt is in error. These contentions present us with the following issue:
Did the Examiner ( 1) fail to present a proper reason to combine Ulvr
and Rosenblatt in the manner suggested, and (2) err in finding the cited prior
art combination of Ulvr and Rosenblatt teaches or suggests a method that
includes, inter alia, the limitations of: "receiving a digital image of a portion
of a distribution item captured via a computing device following a physical
delivery of the distribution item; [and] identifying, using a processor, an
information item shown in the digital image of the portion of the distribution
item," as recited in claim 1?
Analysis
(1) Appellants contend:
The Office Action fails to articulate "a finding that there
was some teaching, suggestion, or motivation, either in the
references themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify the reference or to
combine reference teachings" .... The references do not
provide the alleged motivation and no further evidence is
presented that "proving access to information" is in the
knowledge generally available to one of ordinary skill in the art
to modify the reference or to combine reference teachings. Even
if "accessing information" is generally known, such a broad
statement of motivation could be applied to support the
combination of practically any references that include the word
"data" or "information."
Br. 20.
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The Examiner concludes "it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Ulvr to include
the features of Rosenblatt because information derived from digital images
are used to provide access to other information." Final Act. 20 ( emphasis
omitted).
In this regard, we agree with the Examiner's motivation to combine
Ulvr with Rosenblatt in the manner suggested because we find the claimed
invention is merely a combination of old elements according to known
methods. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In KSR,
the Court stated "[ t ]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. ... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
We agree with the Examiner's findings and conclusions, especially
that the Final Office action provides proper motivation to combine Ulvr and
Rosenblatt in the manner suggested.
(2) Appellants argue:
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[N]owhere in ... Ulvr cited in the Office Action, nor anywhere
else in Ulvr, does the reference describe or suggest "receiving a
digital image of a portion of a distribution item captured via a
computing device following physical delivery of the
distribution item" as recited in Claim 1. Nowhere does Ulvr
include the phrase "digital image" or "image."
Claim 1 further recites, in part, "identifying, using a
processor, an information item shown in the digital image of the
portion of the distribution item." The Office Action cites the
same portions of Ulvr as allegedly describing these features ....
As Ulvr does not even mention digital images, Appellant
respectfully submits that Ulvr cannot describe any further
actions or processing thereof such as the "identifying, using a
processor, an information item shown in the digital image of the
portion of distribution item" recited in Claim 1.
Br. 20-21.
Appellants' contention does not persuade us of error on the part of the
Examiner because Appellants are responding to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, in response to Appellants' arguments, the Examiner finds:
The cited prior art of Ulvr teaches a postal bar code used on
mail pieces that contains different elements of information read
by the post office to process and track .... [T]he cited prior art
of Rosenblatt teaches a distributed dvd case cover, to a user,
which may contain a barcode on that is scanned by a user ...
[ and] the use of a barcode on the cover of a magazine/book
covers/inserts/mailers/mailed advertisements where after
receiving by the recipient, the received barcode may then be
scanned by the recipient.
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Ans. 15-16 (citations omitted).
We note Ulvr discloses, "[ a ]ccording to a broad aspect of the
invention, a mail piece bears a bar codeword containing information." Ulvr
col. 1, 11. 66-67. Further, Rosenblatt discloses, "music, movies, or software,
whose cases may include ... the matrix barcode tag .... [T]he matrix
barcode tag [] may be displayed prominently on the front [] of the DVD case
[] to encourage users of the handheld device [] to scan ... the matrix
barcode tag [] prior to purchase." Rosenblatt ,r 275.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413,425 (CCPA 1981).
We agree with the Examiner's finding that the combination ofUlvr
and Rosenblatt teaches or suggests "receiving a digital image of a portion of
a distribution item captured via a computing device following a physical
delivery of the distribution item; [and] identifying, using a processor, an
information item shown in the digital image of the portion of the distribution
item," as recited in claim 1. While Ulvr teaches a piece of mail (i.e., a
distribution item) bearing a bar code (i.e., an information item), Rosenblatt
teaches a scannable barcode in an item (i.e., an information item in the
digital image of the portion of the distribution item).
We agree with the Examiner's findings and legal conclusions that the
combination ofUlvr and Rosenblatt teaches or suggests the contested
limitations of representative claim 1. We further note Appellants have not
filed a Reply Brief to rebut the Examiner's factual findings and legal
conclusions.
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Based upon the findings above, on this record, we are not persuaded
of error in the Examiner's reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner's obviousness rejection of independent claim 1, and grouped
claims 3-5, 7-12, 14, 16-21, and 43, which fall therewith. See Claim
Grouping, supra.
Reiection of Dependent Claims 2. 13. 15. 44. and 45
Appellants raised additional arguments for patentability of dependent
claims 2, 13, 15, 44, and 4 5 rejected on the same basis as claim 1.
Br. 21-25.
Claims 2 and 44
The Examiner states that, because of Appellants' choice to pursue
method claims, the use of functional claiming, e.g., "to route and track" in
claim 2 was
considered but [is] not given little patentable weight because [it
fails] to add any structural limitations and are thereby regarded
as intended use language. To be especially clear, all limitations
have been considered. However a recitation of the intended use
in a method claim must result in a structural difference between
the claimed method and the prior art in order to patentably
distinguish the claimed method from the prior art. If the prior
art structure is capable of performing the intended use, then it
reads on the claimed limitation.
Final Act. 21.
While the limitation identified by the Examiner may arguably be
considered intended use, we are persuaded of Examiner error because, as
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argued by Appellants, "the Office Action does not cite to any prior art in
rejecting Claims 2 and 44 [but instead] states that 'all limitations have been
considered' and yet no rejection over any reference is presented." Br. 21. In
particular, we note, the Examiner provides no citation to any prior art of
record for the recitation of "receiving the information item from a
distribution entity," as recited in claim 2, and as similarly recited in
dependent claim 44.
Therefore, we do not sustain the Examiner's rejection of dependent
claims 2 and 44.
Claim 13
The Examiner concluded the recitation in claim 13 of "'wherein the
barcode comprises at least one of an intelligent mail barcode and a height
modulated barcode including four states, wherein the intelligent mail
barcode includes encoded tracking information and encoded routing
information' does not have patentable weight because the language is an
example of non-functional descriptive material." Final Act. 24 ( underlining
and footnotes omitted).
Appellants present arguments against the Examiner's conclusion that
the recited information (i.e., encoded tracking information and encoded
routing information) "has a functional relationship with the claimed features
and thus should be given patentable weight." Br. 22. However, we are not
persuaded by Appellants' arguments because the exact type of information
recited in claim 13 does not alter the underlying steps of "identifying a
barcode" and "generating a character string using the barcode," as recited in
dependent claim 3 from which claim 13 depends.
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As a matter of claim construction, we agree with the Examiner's claim
analysis, as indicated in the Final Action. Id., n.9. (citing various holdings
of our reviewing court). Moreover, the Patent Trial and Appeal Board
(PT AB) has provided guidance in decisions regarding claims that differ from
the prior art based only on non-functional descriptive material (NFDM)
which is data. See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) ("[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process"); Ex parte Mathias, 84 USPQ2d 127 6, 1279 (BP AI
2005) (informative), aff'd, 191 F. App'x 959 (Fed. Cir. 2006) (Rule 36)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art"); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff'd, No.
06-1003 (Fed. Cir. June 12, 2006) (Rule 36) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious").
Therefore, on this record, we affirm the Examiner's rejection of
dependent claim 13.
Claims 15 and 45
On this record, and in view of the Examiner's findings (Final Act. 25,
27; Ans. 20-21), which we adopt as our own herein by reference, we are not
persuaded by Appellants' arguments that the Examiner erred in rejecting
claims 15 and 45. Br. 23-25. We find the Examiner has rebutted each of
those arguments in the Answer by a preponderance of the evidence. .
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Therefore, we sustain the rejection of claims 15 and 45, and further
note Appellants have not filed a Reply Brief to rebut the Examiner's
findings and legal conclusions.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1-5, 7-21, and 43--45 in Rejection RI are patent-eligible under 35
U.S.C. § 101, and we do not sustain the rejection.
(2) The Examiner erred with respect to written description
Rejection R2 of claims 1-5, 7-21, and 43--45 under 35 U.S.C. § 112, first
paragraph, and we do not sustain the rejection.
(3) The Examiner erred with respect to indefiniteness Rejection R3
of claims 1-5, 7-21, and 43--45 under 35 U.S.C. § 112, second paragraph,
and we do not sustain the rejection.
( 4) The Examiner did not err with respect to obviousness Rejection
R4 of claims 1, 3-5, 7-21, 43, and 45 under 35 U.S.C. § I03(a) over the
cited prior art combination of record, and we sustain the rejection.
(5) The Examiner erred with respect to obviousness Rejection R4 of
claims 2 and 44 under 35 U.S.C. § I03(a) over the cited prior art
combination of record, and we do not sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 3-5, 7-21, 43,
and 45.
We reverse the Examiner's decision rejecting claims 2 and 44.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART
36