Ex Parte Roberts et al

Patent Trial and Appeal Board

Sep 22, 2017

14321990 (P.T.A.B. Sep. 22, 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.
14/321,990 07/02/2014 Ralph L. Roberts 23189-97 1593
24256 7590 09/22/2017
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
MAIL DATE DELIVERY MODE
09/22/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RALPH L. ROBERTS and
STEVE F. NAGHSHINEH
____________________

Appeal 2017-003643
Application 14/321,990
Technology Center 3600
____________________

Before JOSEPH L. DIXON, ERIC S. FRAHM, and LARRY J. HUME,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
Final Rejection of claims 13–29, 31–37, and 39–41. Office Act. mailed
July 7, 2015. Claims 1–12, 30, and 38 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Independent claims 13 (method) and 27 (system with a processor,
memory, and executable instructions on the processor for performing the
method) are directed to receiving wireless signals representing shipping
documentation data from a mobile transmitter at a remote processor, and
generating a loading manifest using the shipping documentation data.
Independent claims 21 (method) and 35 (system with a processor, memory,
and executable instructions on the processor for performing the method) are
directed to receiving wireless signals representing shipping documentation
data from a mobile transmitter at a remote processor, extracting billing
information from the received shipping documentation data, and then
inputting the extracted billing information into billing and accounting
software. Claims 13 and 21, reproduced below, are illustrative of the
claimed subject matter:
13. A method for processing shipping documentation
data sent from the vicinity of a vehicle to a remote processor,
the method comprising:
receiving at the remote processor, one or more wireless
signals from a mobile data transmission device representing
shipping documentation data associated with cargo of the
vehicle; and
generating a loading manifest utilizing the shipping
documentation data while the cargo is enroute to a location,
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wherein the loading manifest provides information for further
transport of at least a portion of the cargo on another vehicle,
wherein the remote processor performs the acts of
receiving the wireless signals and generating the loading
manifest.

21. A method for processing shipping documentation
data sent from the vicinity of a vehicle to a remote processor,
the method comprising:
receiving by the remote processor, one or more wireless
signals from a mobile data transmission device representing
shipping documentation data associated with cargo of the
vehicle;
while the cargo is enroute to a location, extracting billing
information from the received shipping documentation data,
wherein the billing information is-based at least in part on the
shipping documentation data; and
while the cargo is enroute to the location, inputting the
extracted billing information into a billing and accounting
software package.
REFERENCES and REJECTIONS
The Examiner made the following rejections:
(1) Claims 13–29, 31–37, and 39–41 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Office Act. 2–3; Ans. 2–5. Specifically, the Examiner
determines the claims are directed to the abstract idea of processing a
shipping document at a remote facility (Office Act. 3; Ans. 5), and the
additional claimed elements in the claims are generic computer structure
and/or instructions to implement the idea on a generic computer (a remote
processor capable of receiving wireless signals and a mobile transmission
device). Office Act. 3–4; Ans. 4–5.
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(2) Claims 21–26, 35, 37, and 39–41 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over N & M Transfer, pp.
PR00002198–2213 (May 5, 1992), in view of Official Notice.1 Office Act.
3–6; Ans. 6–8. Specifically, the Examiner determines that N & M Transfer
(PR00002207) teaches all of the recited subject matter of independent claims
21 and 35, including a remote processor receives wireless signals and
performs a method for processing shipping documentation data sent from the
vicinity of a vehicle and generating billing information based on the
shipping documentation data, except for specifically teaching extracting
billing information from the shipping documentation data and inputting the
billing information into accounting and billing software. Office Act. 4. The
Examiner takes Official Notice that “extracting billing information from the
received shipping documentation data and inputting the billing information
into an accounting and billing software is old and well known in the art” at
the time of Appellants’ invention. Office Act. 4. The Examiner also
provides Storch (US 5,920,846; issued July 6, 1999) as evidence to support
the Official Notice. Office Act. 4 (citing Storch col. 37, ll. 25–55).
ISSUES
Based on Appellants’ arguments in the Appeal Brief (App. Br.
11–35), the following two issues are presented on appeal:2

1 The Examiner first took the Official Notice in the Final Rejection, mailed
February 6, 2015.
2 Appellants present two major groups of argument with regard to the
rejection under 35 U.S.C. § 101 as to (1) independent claims 13 and 27 (Br.
13–21); and (2) independent claims 21 and 35 (Br. 21–29). Claims 13 and
21 recite similar methods and subject matter, namely that of a system with a
processor, memory, and executable instructions on the processor for
performing a method of processing shipping documentation data sent from
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(1) Did the Examiner err in rejecting claims 13–29, 31–37, and 39–41
under 35 U.S.C. § 101 because the claimed inventions recited in
representative claims 13 and 21 are directed to abstract ideas without
significantly more than the abstract idea?
(2) Did the Examiner err in rejecting claims 21–26, 35, 37, and 39–41
under 35 U.S.C. § 103(a) over the combination of N & M and Official
Notice because the combination fails to teach or suggest the methods for
processing shipping documentation data, as recited in independent claims 21
and 35?
ANALYSIS
35 U.S.C. § 101 Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2354 (2014).

the vicinity of a vehicle to a remote processor; and claims 27 and 35 recite
similar systems and subject matter, namely that of a remote processing
system for processing shipping documentation data sent from the vicinity of
a vehicle to a remote processor having a processor, memory, and executable
instructions on the processor for processing the shipping documentation
data. Claims 13 and 27 recite similar subject matter relating to preparing a
loading manifest, and claims 21 and 35 recited similar subject matter
relating to receiving shipping documentation data and using that data to
prepare/generate a billing document (claim 13) or billing information (claim
35). In view of the foregoing, we select claims 13 and 21 as representative
of the group of claims rejected under 35 U.S.C. § 101.
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice Corp., 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts” (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355–57. If
the claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78–9). For claims to pass muster, “at step
two, an inventive concept must be evident in the claims.” RecogniCorp,
LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
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We have considered all of Appellants’ arguments (Br. 12–30), but
find them unpersuasive as to error in the rejection for at least the following
reasons.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. Here, in rejecting the claims under
35 U.S.C. § 101, the Examiner finds, and we agree, that claims 13 and 21 are
directed to the abstract ideas of processing shipping documentation data at a
remote location (Office Act. 3; Ans. 5).
Examining earlier cases can have a role, especially in deciding
whether a concept that claims are found to be directed to is an abstract idea.
See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (“Instead of a definition [for what an ‘abstract idea’
encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”).
Here, the instant case concerns analyzing and displaying data to indicate real
estate market growth — a fundamental economic, commercial, and/or
business practice.
And, at least the following decisions from our reviewing court have
found many similar types of fundamental commercial practices related to
shipping and shipping documentation data to be patent ineligible:
Macropoint, LLC v. Fourkites, Inc., 671 Fed. Appx. 780 (mem.) (Fed. Cir.
2016) (mem.) (affirming the district court’s determination that tracking
freight is an abstract idea that is patent ineligible); Concaten, Inc. v.
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AmeriTrak Fleet Solutions, LLC, 669 Fed. Appx. 571 (Mem.) (Fed. Cir.
2016) (mem.) (cert. denied) (2017) (collecting information from a vehicle
and transmitting that information over a network is an abstract idea that is
patent ineligible); Wireless Media Innovations, LLC v. Maher Terminals,
LLC, 636 Fed. Appx. 1014 (Mem.)(Fed. Cir. 2016) (holding that monitoring
locations, movement, and load status of shipping containers within a
container-receiving yard, and storing, reporting and communicating this
information in various forms through generic computer functions is patent
ineligible).
Furthermore, at least the following decisions from our reviewing court
have found many similar types of fundamental commercial practices related
to collecting, receiving, analyzing, transmitting business information to be
patent ineligible: Concaten, Inc. AmeriTrak Fleet Solutions, LLC, 2016 WL
5899749 (Fed. Cir. 2016) (mem.) (cert. denied), 2017 WL 1001313
(2017)(receiving, processing, and transmitting data is patent ineligible);
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(holding that collecting information, analyzing it, and displaying certain
results of the collection and analysis is patent ineligible). In this light,
Appellants’ methods of, and systems for, processing shipping documentation
data recited in claims 13 and 21 are commercial practices that are economic
and fundamental in nature.
We conclude that receiving, processing, and transmitting shipping
documentation data as recited in method claims 13 and 21 are fundamental
economic practices and, therefore, constitute patent-ineligible subject matter.
See Alice, 134 S. Ct. at 2357; Bilski v. Kappos, 561 U.S. 593, 611 (2010);
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
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(“fundamental economic and conventional business practices are often found
to be abstract ideas, even if performed on a computer”).
Alice Step Two
The Examiner also finds, and we agree, claims 13 and 21 do not
include limitations that are “significantly more” than the abstract idea
because the claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. Office Act. 3–4; Ans. 4–5. The
additional claimed elements in claims 13 and 21 (a remote processor for
receiving wireless signals sent from another vicinity (e.g., from a mobile
transmission device associated with a vehicle)) are merely generic computer
structures and/or instructions to implement the ideas on generic
computers/processors. Thus, no more than a general purpose computer is
recited in the claims on appeal, and we find the claims are not directed to an
improvement to computer functionality, but to an abstract idea.
None of the individual steps of representative claims 13 and 21,
viewed “both individually and ‘as an ordered combination,’” transform the
nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79). The claimed sequences of steps are
abstract ideas comprising only “conventional steps, specified at a high level
of generality,” which is insufficient to supply an “inventive concept.” Id. at
2357 (quoting Mayo, 566 U.S. at 71–2, 77–8, 82–3).
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Preemption
Appellants’ contention (Br. 29) that claims 13 and 21 “pose no risk of
preempting any ‘building blocks of human ingenuity’” because the claims
cover only operations/processing performed “while the vehicle and
associated cargo is enroute to a location” is unpersuasive. Preemption is not
a separate test, but is inherently addressed within the Alice framework. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”).
Appellants’ argument that the claims do not completely preempt
others from the whole field identified by the Examiner of remotely
processing shipping documentation data is conclusory and not persuasive
that the claims do not still preempt a significant field of ideas.
Summary
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 101 of representative independent claims 13 and 21, as well as
claims 14–20, 22–29, 31–37, and 39–41 grouped therewith.
35 U.S.C. § 103
For the reasons that follow, we agree with Appellants’ arguments (Br.
30–35) that the combination of N & M and Official Notice does not meet the
limitations recited in claims 21 and 35 (and thus by way of dependency, as
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also recited in dependent claims 22–26, 37, and 39–41) of receiving shipping
documentation data.
N & M
The Examiner determines that N & M Transfer (PR00002207) teaches
all of the recited subject matter of independent claims 21 and 35, including a
remote processor receives wireless signals and performs a method for
processing shipping documentation data sent from the vicinity of a vehicle
and generating billing information based on the shipping documentation
data, except for specifically teaching extracting billing information from the
shipping documentation data and inputting the billing information into
accounting and billing software. Office Act. 4. Notably, the Examiner
makes no determination as to any disclosure in N & M or the use of Official
Notice of the timing element of claims 21 and 35 (“while the cargo is
enroute to a location,” extracting the billing information and inputting it in to
a billing and accounting software package). See generally Office Act. 4–6.
Although we find N & M discloses wirelessly transmitting (by fax as
shown and described at PR00002200–2205) bills of lading and printing a
manifest upon completion of bill entry (PR00002207), N & M clearly
discloses doing so “immediately after a pick up is made.” PR00002207
(emphasis added). Thus, we agree with Appellants that “[t]here is no
teaching or suggestion in N&M to perform tasks while the cargo is enroute
to a location, as recited in Appellant[s’] claims” (Br. 32).
Based on the foregoing, and because the Examiner makes no
determination as to any disclosure in N & M or the use of Official Notice of
the timing element of claims 21 and 35, we agree with Appellants that
“[n]othing in N&M nor the Official Notice (including Storch) teaches or
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fairly suggests extracting billing information while the cargo is enroute to a
location or inputting the extracted billing information into a billing and
accounting software package while the cargo is enroute to a location, as
recited in Appellant[s’] claim 21” (Br. 32), and as similarly recited in
remaining independent claim 35. More specifically, we agree with
Appellants’ contention that “[t]here is no teaching or suggestion in N&M to
perform tasks while the cargo is enroute to a location, as recited in
Appellant[s’] claims” (Br. 32).
Finally, we agree with Appellants’ contention that the manifest
disclosed by N & M “is not a loading manifest for another vehicle [as
claimed], but the manifest for the incoming vehicle” (Br. 32).
Official Notice
The Examiner takes Official Notice that “extracting billing
information from the received shipping documentation data and inputting the
billing information into an accounting and billing software is old and well
known in the art” at the time of Appellants’ invention, and relies on column
37, lines 25–55 of Storch as evidence to support the Official Notice. Office
Act. 4. The Examiner first took the Official Notice in the Final Rejection
mailed February 6, 2015, and Appellants timely and adequately contested
the Official Notice in the response to that Final Rejection on June 26, 2015.
See Appellants’ Response filed June 26, 2015, pp. 16–18 (specifically
pointed out the errors in the Examiner’s action). In view of the foregoing,
the Examiner’s position that Appellants failed to adequately traverse the use
of Official Notice (see Ans. 6–8) in untenable.
“Where a reference is relied on to support a rejection whether or not
in a ‘minor capacity,’ there would appear to be no excuse for not positively
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including the reference in the statement of the rejection.” In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970). In the instant case before us on appeal,
the Examiner has cited (Office Act. 4; Ans. 6) the additional reference to
Storch in support of the obviousness rejection of claims 21–26, 35, 37, and
39–41. We have not considered this reference as supporting the Examiner’s
use of Official Notice since it is not part of the statement of the rejection and
may not be properly relied upon.3 In re Hoch, 428 F.2d at 1342 n.3.
Summary
Appellants’ arguments have shown error in the Examiner’s factual
findings or ultimate conclusion of obviousness of independent claims 21
and 35, as well as dependent claims 22–26, 37, and 39–41 which are argued
for the same reasons as claims 21 and 35. In view of the foregoing, we
cannot sustain the Examiner’s rejection of 21–26, 35, 37, and 39–41 under
35 U.S.C. § 103 over the combination of N & M Transfer and Official
Notice.

3 Even assuming arguendo, that Storch was positively included in the
statement of the rejection, Storch does not actually support the disclosure for
which it is relied upon. Notably, Storch only teaches transmitting
completion information about a service order to a computer memory
(col. 37, ll. 15–18), extracting billing information from the received
completion information received (col. 37, ll. 41–47), and inputting the
completion information into a computer controlled billing system 109
(col. 37, ll. 47–51). That is, Storch discloses extracting billing information
from completion information about a service order, not from “shipping
documentation data associated with cargo of [a] vehicle” as recited in claims
21 and 35.

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CONCLUSIONS
The Examiner did not err in rejecting claims 13–29, 31–37, and 39–41
based upon a lack of patent eligible subject matter under 35 U.S.C. § 101;
and the Examiner erred in rejecting claims 21–26, 35, 37, and 39–41 for
obviousness under 35 U.S.C. § 103(a).

DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
13–29, 31–37, and 39–41 under 35 U.S.C. § 101, and we reverse the
Examiner’s rejection of claims 21–26, 35, 37, and 39–41 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED