Ex Parte Lievens et al

Patent Trials and Appeals Board

May 15, 2019

14201029 - (D) (P.T.A.B. May. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/201,029 03/07/2014 Daniel Lievens
143177 7590 05/17/2019
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
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.
IPP201327910/258625 7711
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL LIEVENS, VINCENT DETHIER, and
LUC PIRENNE1
Appeal2018-001829
Application 14/201,029
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 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 United Parcel Service Of
America, Inc. App. Br. 4.
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BACKGROUND2
Appellants' disclosed embodiments and claimed invention relate to
systems and methods of managing item pickup at attended delivery/pickup
locations. Spec. 3. Claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computer-implemented method of delivering a parcel
to an alternate delivery/pickup location, said method
compnsmg:
[ ( 1)] providing, by at least one processor, a selection of
one or more attended delivery/pickup locations to a first
user;
[(2)] receiving, by at least one processor, a request from
said first user to deliver one or more parcels to a
particular one of said one or more attended
deliver/pickup locations, said one or more parcels having
one or more intended parcel recipients;
[(3)] facilitating delivery, by at least one processor, of
said one or more parcels from an origin location to said
particular one of said one or more attended
delivery/pickup locations; and
[ ( 4)] receiving, by at least one processor, an indication
that said one or more intended parcel recipients is
attempting to pickup said one or more parcels from said
particular one of said one or more attended
delivery/pickup locations;
[ ( 5)] receiving, by at least one processor, an indication
that said one or more intended parcel recipients is
attempting to pickup said one or more parcels from said
2 Throughout this Decision we have considered the Specification filed
March 7, 2014 ("Spec."), the Final Rejection mailed November 17, 2016
("Final Act."), the Appeal Brief filed May 25, 2017 ("Appeal Br."), the
Examiner's Answer mailed October 11, 2017 ("Ans."), and the Reply Brief
filed December 11, 2017 ("Reply Br.").
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particular one of said one or more attended
delivery/pickup locations;
[(6)] confirming, by at least one processor, an identity of
said one or more intended parcel recipients; and
[(7)] at least partially in response to said confirmation,
enabling release, by at least one processor, of said one or
more parcels to said one or more confirmed intended
parcel recipients.
Appeal Br. 28 (Claims App'x) (limitation numbering added).
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2-4.
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by US 2005/0006470 Al, published Jan. 13, 2015 ("Mrozik").
Final Act. 4-14.
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)(l)(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.
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Rejection of Claims 1-20 under 35 U.S.C. § 102(b)
For purposes of the anticipation rejection, Appellants argue claims 1-
20 together as a group. See App. Br. 24-26; Reply Br. 10-11. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we limit our
discussion to independent claim 1.
The Examiner finds that claims 1-20 are anticipated by Mrozik. Final
Act. 4-14. Specifically, the Examiner contends that Mrozik discloses
"providing ... a selection of one or more attended delivery/pickup locations
to a first user." Final Act. 4. According to the Examiner, the claimed "first
user" is Mrozik's "agent of service provider," who transports an item to a
retail store 102 and, upon arrival at the store, "select[ s] the store's name or
other identifying information ( address, building name, telephone number,
etc.) as it is contained in a hand-held data acquisition and storage device
108." Id. at 4-5 (quoting ,-J 40). (emphasis omitted). For the limitation
"receiving ... a request from said first user to deliver one or more parcels to
a particular one of said one or more attended delivery/pickup locations, said
one or more parcels having one or more intended parcel recipients," the
Examiner explains that Mrozik discloses "packages associated with the
selected store are identified by the package tracking identifiers that ... [are]
to be delivered at that location." Id. (citing Mrozik ,-J,-J 29, 41). (emphasis
omitted).
Appellants argue that Mrozik does not anticipate the claims because,
among other deficiencies, Mrozik does not disclose "receiving, from a first
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user, a first request to deliver one or more parcels to an attended
delivery/pickup location."3 Appeal Br. 25-26.
We agree with Appellants that the Examiner does not sufficiently
explain, nor is it obvious from the cited portions of Mrozik, that Mrozik
discloses "receiving ... a request from said first user to deliver one or more
parcels to a particular one of said one or more attended delivery/pickup
locations." Final Act. 5. As discussed above, the Examiner points to
Mrozik's "agent of service provider" as the claimed first user. Id. The
Examiner, however, does not explain how Mrozik discloses that the agent of
the service provider requests delivery of one or more parcels to an attended
delivery/pickup location. In fact, nothing in the paragraphs cited by the
Examiner for this limitation refers to any user requesting delivery. See
Mrozik ,-J 29 ( discussing that, upon deliver, an agent of the service provider
will record that delivery), ,-J 41 ( describing how the service provider agent
confirms the accuracy of handheld device's association of packages with the
retail store to which they are to be delivered based on the information on the
package itself). Moreover, we read other portions of Mrozik as indicating
that the corporate headquarters of a retail store is responsible for actually
requesting delivery of a parcel to a particular location. See Mrozik ,-J 5 ("[I]n
one scenario a corporate headquarters (HQ) may be responsible for
maintaining the inventory in one or more retail outlets. HQ may order items
from any number of vendors (a shipper)."). The Examiner, therefore, does
not sufficiently explain how Mrozik discloses "said first user" requests
delivery. Appeal Br. 28 (Claims App'x).
3 A version of this limitation is recited in each of the independent claims 1,
11, and 16.
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We, therefore, do not sustain the Examiner's rejection of claims 1-20
as unpatentable under 35 U.S.C. § 102(a) as anticipated by Mrozik.
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 Bankint'l, 573 U.S. 208,216 (2014)
(quoting Ass 'nfor 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).
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
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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 Appeal Br. 8-24; Reply Br. 3-10. 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 11 and 16 and
dependent claims 2-10, 12-15, and 17-20 stand or fall with independent
claim 1.
With these principles in mind, we tum to the Examiner's § 101
rejection.
The Judicial Exception-Abstract Idea
The Examiner determined the claims recite an abstract idea
encompassing organizing human activity. Ans. 15. For the reasons
explained below, we agree that the claims recite an abstract idea.
As quoted and enumerated above, claim 1 includes seven main
limitations. These limitations recite a process of providing a list of delivery
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locations (limitation (1)), receiving a request for delivery to one of those
locations (limitation (2)),facilitating the requested delivery (limitation (3)),
receiving an indication of delivery and an indication that an intended
recipient is attempting pickup of the package at one of the delivery locations
(limitations ( 4 and 5) ), confirming the identity of that intended recipient
(limitation ( 6) ), and enabling release of the package to the confirmed
intended recipient (limitation 7). This process encompasses facilitating
attended pickup and delivery of parcels, which is a method of organizing
human activity-a longstanding practice of delivering packages to
alternative locations. 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. 14 ("[T]he present application is directed to methods, computer
systems, and computer-readable storage media for facilitating pick up of
items (e.g., parcels) delivered to an attended delivery/pickup location (e.g.,
an intermediate location).").
Many of the claimed limitations, including at least limitations 1, 2, 4,
and 5 involve gathering, analyzing, and manipulating data. When claimed in
a manner similar to the claims here, gathering and analyzing information
using conventional techniques has been determined to be an abstract idea. In
re TL! Commc'ns LLC Pat. Litig., 823 F.3d 607, 612-13 (Fed. Cir. 2016).
Also, more recently, our reviewing court has also concluded that some acts
of collecting, analyzing, manipulating, and displaying data are patent
ineligible. Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916
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F.3d 1363 (Fed. Cir. 2019) (citing Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). The Federal
Circuit has found claims including limitations that confirm identity data, as
recited by limitation 6, to be abstract. Prism Techs. LLC v. T-Mobile USA,
Inc., 696 Fed. App'x 1014, 1017 (Fed. Cir. 2017) (stating the asserted claims
are directed to an abstract process that includes "confirming the authenticity
of the identity data associated with that device"); see also Secured Mail
Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 908-11 (Fed. Cir.
2017) (holding the "Intelligent Mail Barcode patents," which recite "[a]
method of verifying mail identification data" directed to an abstract idea).
In addition, these limitations, under their broadest reasonable
interpretation, cover steps that, but for the recitation of the "at least one
processor," could be performed in the mind. Appeal Br. 28 (Claims App'x).
That is, nothing recited in the claim prevents each of the steps from
practically being performed in the mind. For example, but for the at least
one processor, the claim encompasses a process that could occur using a
telephone and communication between several parties-a package recipient
and a delivery agent. And the Federal Circuit continues to "treat[]
analyzing information by steps people go through in their minds, ... without
more, as essentially mental processes within the abstract-idea category."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir.
2016) (quoting Elec. Power, 830 F.3d at 1354).
Claims to subject matter similar to that recited here have been found
ineligible by the Federal Circuit. For example, the Federal Circuit has found
claims that recite "receiving from a sender a plurality of mail items,"
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"identifying undeliverable mail items," "decoding ... encoded data,"
"creating output data," and "determining if the sender wants a corrected
address," to be abstract. Return Mail, Inc. v. United States Postal Service,
868 F.3d 1350, 1368 (Fed. Cir. 2017). Similarly, the Federal Circuit has
found abstract claims directed to "using a marking affixed to the outside of a
mail object to communicate information about the mail object." Secured
Mail Solutions at 911. And the Federal Circuit has found abstract claims
directed to "a method for collecting and organizing information about
available real estate properties and displaying this information on a digital
map that can be manipulated by the user." Move, Inc. v. Real Estate Alliance
Ltd., 721 Fed. App'x 950, 954 (Fed. Cir. 2018).
Accordingly, we conclude the claims recite a certain method of
organizing human activity ( commercial interaction) or concepts performed
in the human mind identified in the Revised Guidance, and thus, an abstract
idea.4 Revised Guidance, 84 Fed. Reg. at 52, 53 (listing "[c]ertain methods
of organizing human activity ... -commercial or legal interactions" and
"[ m Jental processes-concepts performed in the human mind (including an
4 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, "[ a ]n abstract
idea can generally be described at different levels of abstraction . . . . The
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 Fair Warning 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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observation, evaluation, judgment, opinion)" each as one of the "enumerated
groupings of abstract ideas.").
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 "at least one
processor." Appeal Br. 28 (Claims App'x). 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, 561 U.S. at 610-11
(quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
The Specification describes the at least one processor as a generic
component. For example, the Specification states that the recited
functionality "can be implemented by a computer executing computer
program instructions" that "may be loaded onto a general purpose
computer." Spec. 6.
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Appellants' arguments have not persuaded us claim 1 is "directed to"
a patent-eligible concept. For example, Appellants argue the Examiner
failed to establish a prima facie case of patent ineligibility. Appeal
Br.10-22; Reply Br. 3, 9-10. We disagree. The Federal Circuit has
repeatedly noted that "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The Examiner satisfies the burden of establishing a
prima facie case under 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. See In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the§ 101 rejection. See
Final Act. 2-4. The Examiner's statements satisfy§ 132(a) because they
apply the Alice analytical framework and apprise Appellants of the reasons
for the § 101 rejection under that framework. Appellants have not
responded by alleging a failure to understand the rejection. To the contrary,
Appellants clearly identify the abstract idea identified by the Examiner. See
Appeal Br. 12 ("The Purported Abstract Idea is nearly a complete
duplication of independent claim 1, including all seven steps of the claimed
method.").
Appellants also argue that the claims are not directed to an abstract
idea because they "define a specific process for making alternative delivery
of a parcel to an intended recipient at an intermediate location and a way to
confirm the authorization of the person attempting to retrieve the parcel from
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the intermediate location." Appeal Br. 15, see also 22-24. However, "[t]he
'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."
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016) (emphasis omitted) (quoting Diehr, 450 U.S. at 188-89).
Finally, Appellants argue that the recited "attended delivery/pickup
location," "one or more parcels," and "intended parcel recipients" (and many
other recited elements) are "additional elements" beyond the purported
abstract idea. Appeal Br. 17-20. We, however, are not persuaded that these
elements are anything more than objects represented by data in the abstract
idea identified above. These objects are similar to the mail object in Secured
Mail Solutions and the electric power grid in Electric Power Group in that
they are objects represented by data in the claimed methods. Secured Mail
Solutions, 873 F.3d at 911; Elec. Power Grp., 830 F.3d at 1353-54. These
objects, however, are a part of the abstract idea and are not additional
elements that integrate the recited abstract idea into a practical application.
Accordingly, even in combination with all the other recited elements,
the additional elements do not integrate the abstract idea into a practical
application because they do 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
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("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
factual determination. Id. ( citing MPEP § 2106.05( d), as modified by the
Berkheimer Memorandum). 5
Whether the additional elements ( at least one or more processors) 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)). Other than asserting that the entirety of the claimed subject
matter is unconventional, Appellants do not point to any particular claimed
element that does not qualify as WURC. Appeal Br. 15, 22-24. In fact,
Appellants' Specification demonstrates the WURC nature of the claimed
subject matter because it indicates they may be implemented with generic
devices. Spec. 6-11.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
5 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").
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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. 8-24; Reply Br. 3-10.
CONCLUSION
We conclude Appellants have demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 102(b ).
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. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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