Ex Parte Stowe

Patent Trials and Appeals Board

May 22, 2019

10860670 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/860,670 06/03/2004 Robert Stowe
143177 7590 05/24/2019
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.
IPP200460359/288979 4681
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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 ROBERT STOWE
Appeal2018-002347 1
Application 10/860,6702
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 13-15, 66, 68, 70-76, 79, and 80. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
August 3, 2017) and Reply Brief ("Reply Br.," filed January 3, 2018), and
the Examiner's Answer ("Ans.," mailed November 3, 2017), Advisory
Action ("Adv. Act.," mailed April 18, 2017), and Final Office Action
("Final Act.," mailed November 4, 2016).
2 Appellant identifies United Parcel Service of America, Inc. as the real
party in interest. App. Br. 2.
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Application 10/860,670
CLAIMED INVENTION
Appellant's claimed invention relates to "methods of aggregating
multiple parcels intended for delivery at a location into a minimum number
of deliveries at that location" (Spec. § 1 ).
Claims 13 and 70 are the independent claims on appeal. Claim 13,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
13. A system for aggregating the delivery of parcels to
a customer by a carrier, said system comprising:
an apparatus comprising at least one processor and at least
one memory, wherein the processor is configured to:
[(a)] receive an indication that a first parcel has
been shipped for delivery, in a first shipping route, to a
detected location of the customer, said first parcel having
a known first delivery date;
[ (b)] receive an indication that a second parcel has
been shipped for delivery, in a second shipping route, to
the detected location of the customer, said second parcel
having a known second delivery date that is different from
the first delivery date;
[(c)] expedite delivery of the second parcel after
receipt of said indications, when said second delivery date
is after the first delivery date by:
( 1) associating a higher class of service
offered by the carrier for the second parcel such that
the second delivery date is adjusted to coincide with
the first delivery date and the first parcel and the
second parcel are delivered, via a delivery vehicle
of the carrier, in a single delivery to the location of
the customer on the first delivery date; and
(2) associating a shipping rate with the
first parcel that is discounted from the carrier's
normal shipping rate for the first parcel in response
to detecting a flag, stored in a database, comprising
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coded indicia indicating that the first parcel and the
second parcel are in the single delivery; and
[ ( d)] delay delivery of the second parcel by the
carrier after receiving said indications, when said second
delivery date is before the first delivery date by:
( 1) associating the second delivery date
with the first parcel such that the first parcel and the
second parcel are delivered, via the delivery
vehicle, in a single delivery to the location of the
customer on the first delivery date; and
(2) associating a shipping rate with the
second parcel that is discounted from the carrier's
normal shipping rate for the second parcel in
response to detecting the flag, stored in the
database, comprising the coded indicia indicating
that the first parcel and the second parcel are in the
single delivery.
REJECTI0NS 3
Claims 13-15, 66, 68, 70-76, 79, and 80 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (App. Br. 7-21 ). We
select independent claim 13 as representative. The remaining claims stand
or fall with claim 13. See 37 C.F.R. §4I.37(c)(l)(iv).
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
3 Claims 77 and 78 have been canceled, and the rejections of those claims
under§§ 101 and 112(a) have been withdrawn. See Adv. Act. 2.
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abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, 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." Id. (quoting Mayo,
566 U.S. at 79, 78). This is "a search for an 'inventive concept' - i.e., 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."' Id. at 217-18 ( alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "aggregating parcels shipped by
one or more shippers for a single delivery to the location in order to reduce
multiple deliveries," which the Examiner concluded is, inter alia, "the
automation of human activity," and, therefore, an abstract idea (Final
Act. 5). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea itself (id. at 5-6).
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After Appellant's briefs were filed in this appeal, and the Examiner's
Answer mailed, the USPTO published revised guidance for use by USPTO
personnel in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the "2019 Revised Guidance"). That
guidance revised the USP TO' s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) providing groupings of subject
matter that is considered an abstract idea; and (2) clarifying that a claim is
not "directed to" a judicial exception if the judicial exception is integrated
into a practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are "directed to" a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Id. at 54. If so, we next
consider whether the claim includes additional elements, beyond the judicial
exception, "that integrate the uudicial] exception into a practical
application," i.e., that apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
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the clam is more than a drafting effort designed to monopolize the judicial
exception ("Step 2A, Prong Two"). Id. at 54--55. Only if the claim
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application do we conclude that the claim is "directed to" the
judicial exception, e.g., an abstract idea.
We are not persuaded here that the Examiner erred in determining that
the claims are directed to an abstract idea or that the Examiner otherwise
oversimplified the concept to which the claims are directed without taking
the actual claim language into account (App. Br. 10-18; see also Reply
Br. 2-3). There is no requirement that the Examiner's formulation of the
abstract idea copy the claim language. And, as described below, the
Examiner's characterization of the claims here is fully consistent with the
Specification. 4
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
4 Moreover, an abstract idea can be expressed at various levels of
abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016) ("An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer."). That the claim
language includes more words than the phrase the Examiner used to
articulate the abstract idea, and that the Examiner, thus, articulates the
abstract idea at a higher level of abstraction than would Appellant is an
insufficient basis for determining that the claims are not directed to an
abstract idea.
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matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36. Here, it is clear from the
Specification, including the claim language, that the claims focus on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is entitled "MULTI-PACKAGE DELIVERY
METHODS," and states that the field of the invention is, specifically,
"methods of aggregating multiple parcels intended for delivery at a location
into a minimum number of deliveries at that location" (Spec. ,r 1 ). The
Specification describes, in the "Description of Related Art" section, that in
many instances, carriers, e.g., UPS, FedEx, may make multiple deliveries to
a single location on a single day - a process that not only is inefficient but
also can be costly to the carriers (id. ,r 2). One way to reduce costs and
inefficiencies is to have customers pick up their parcels at a distribution
facility; however, this may be inconvenient for the customer and not provide
the level of service that the customer desires (id.).
The claimed invention is ostensibly intended to reduce the costs and
inefficiencies associated with the delivery process, while providing a high
level of service to the carrier's customers, by aggregating the delivery of
multiple parcels to a location such the number of deliveries to that location
decreases and the number of parcels in each delivery increases (id. ,r 4). The
Specification, thus, describes that if, for example, a customer orders an item
to be delivered in two days but already has a first parcel in transit scheduled
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to be delivered on the third day, the customer may be asked to wait an
additional day to receive the second parcel so that it may be aggregated for
delivery with the first parcel (id.). As another example, if a first parcel, in
transit, is scheduled for delivery the next day, the customer may be able to
get next-day delivery for the second parcel so that the first and second
parcels may be aggregated for delivery (id.). In some instances, the
customer may be provided shipping discounts to offset the cost of the higher
class of delivery service, e.g., next-day air (id.).
Consistent with this discussion, claim 13 recites a system for
aggregating the delivery of parcels to a customer comprising an apparatus
having at least one processor configured to: (1) receive an indication that a
first parcel, having a first delivery date, has been shipped to a customer
location, i.e., "receive an indication that a first parcel has been shipped for
delivery, in a first shipping route, to a detected location of the customer, said
first parcel having a known first delivery date" (step (a)); (2) receive an
indication that a second parcel, having a second delivery date different from
the first delivery date, has been shipped to the customer location, i.e.,
"receive an indication that a second parcel has been shipped for delivery, in
a second shipping route, to the detected location of the customer, said
second parcel having a known second delivery date that is different from the
first delivery date" (step (b)); (3) expedite delivery of the second parcel if
the second delivery date is after the first delivery date so that the second
delivery date coincides with the first delivery date, i.e., "expedite delivery of
the second parcel after receipt of said indications, when said second delivery
date is after the first delivery date" (step (c)); and (4) delay delivery of the
second parcel if the second delivery date is before the first delivery date so
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that the first parcel and the second parcel are in a single delivery, i.e., "delay
delivery of the second parcel by the carrier after receiving said indications,
when said second delivery date is before the first delivery date" (step (d)).
Simply put, claim 13 recites aggregating multiple parcels for a single
delivery to a customer location by (1) collecting information (i.e.,
indications that a first parcel having a first delivery date and a second parcel
having a second delivery date have been shipped to a customer location);
(2) analyzing the information (i.e., comparing the first and second delivery
dates); and (3) using rules to identify options (i.e., expediting delivery of the
second parcel if the second delivery data is later than the first delivery date
and delaying delivery of the second parcel if the second delivery date is
earlier than the first delivery date (Final Act. 2-3). Given their broadest
reasonable interpretation, these limitations, thus, recite a commercial
interaction, i.e., a method of organizing human activity, and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
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ideas); see also SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
The Federal Circuit also held in SmartGene, where the claim did no more
than call for a computing device with basic functionality, that comparing
new and stored information and using rules to identify options is an abstract
idea. SmartGene, Inc. v. Advanced Biological Labs, S.A., 555 F. App'x 950,
955 (Fed. Cir. 2014).
Referencing the claim language, i.e., limitations (a), (b ), and ( c ), as
recited in claim 13, Appellant ostensibly maintains that claim 13 is not
directed to an abstract idea because these features are "incapable of being
performed solely in the mind and solely using pen and paper" (App.
Br. 14-15; see also Reply Br. 9-10, 12-13). Appellant, thus, argues, for
example, that "a human using pen and paper, or 'by hand or merely
thinking' alone, without using any device," is incapable of "detecting a flag,
stored in a database, comprising coded indicia much less coded indicia
indicating parcels of a single delivery" (App. Br. 15-16) and that the recited
features, e.g., limitations (a), (b), and (c), as recited in claim 13, are not
simply performable by human (id. at 16-18; see also Reply Br. 9-10).
To the extent Appellant maintains that claim 13 is patent-eligible
because the claim recites the use of a computer, we note that a substantially
similar argument was expressly rejected by the Court in Alice. See Alice
Corp., 573 U.S. at 223 ("the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention").
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Although "a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101," CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does
not logically follow that methods that arguably cannot be performed entirely
in the human mind or manually, using pen and paper, are, therefore, not
directed to abstract ideas. 5
Having concluded that claim 13 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1 ), we next consider whether the claim recites
"additional elements that integrate the judicial exception into a practical
application" (Step 2A, Prong 2).
The only additional elements recited in claim 13, beyond the abstract
idea, are the claimed "at least one processor," "at least one memory," and
"database." But, as the Examiner observes (Final Act. 3, 6), these elements
5 Moreover, we are not convinced here there is no human analog for the
invention. Although claim 13 recites that the method steps are performed by
a processor, a human, e.g., a carrier employee, could determine that two
packages are being shipped to the same address and then modify the service
class so that the packages are delivered in a single delivery. Further, as the
Examiner observes,
the term flag can be any type of indicator or marker, such as
highlighting, marking, tagging, labeling, etc., that separates or
distinguishes one item from others. A human can visually detect
a "flag" or a flagged item on a shipping list/spreadsheet
(database) without the need or use of a computer. The limitation
"coded indicia" does not require or inherently imply the use or
requirement of a computer. The coded indicia could be a
tracking number, code, shipping code, or any form of identifier
that can be visually observed by a human.
Ans. 7.
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are described in the Specification at a high level of generality, i.e., as generic
computer components (see, e.g., Spec. ,r,r 14--15).
Notably, the Specification does not suggest that these computer
components are improved from a technical perspective, or that they operate
differently than they ordinarily would. For example, we find no indication
in the Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 13 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a "practical application," as that
phrase is used in the 2019 Revised Guidance. 6
6 The Revised Guidance references MPEP §§ 2106.05(a}-(c) and (e}-(h) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Id. at 55. If the recited judicial exception
is integrated into a practical application, as determined under one or more of
these MPEP sections, the claim is not "directed to" the judicial exception.
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Appellant argues that the claims are directed to "technical
improvements in the fields of geolocation detection of parcels in a route
delivered by a delivery vehicle and database management environments" (id.
at 19-20). And Appellant asserts that providing an efficient and reliable
mechanism for an apparatus to perform "geolocation detection of parcels
while being transported by a vehicle along a route and database management
pertaining to detecting flags, within databases, with coded indicia regarding
the parcels in the delivery by the vehicle" provides "improvements to a
technical field, adds a specific limitation other than what is well-understood,
routine and conventional in the field, provides a new and useful application
in the physical realm, and provides meaningful recitations beyond generally
linking the use of an abstract idea to a particular technological environment"
(id. at 19-20).7
We, however, fail to see how, and Appellant does not explain how
consolidating shipments for concurrent delivery, including detecting a flag,
stored in a database, indicating that a first parcel and a second parcel are in a
single delivery somehow constitutes an improvement in database
management. As for Appellant's contention that the claims are directed to
technical improvements in the field of geolocation detection of parcels,
claim 13 merely recites a result (i.e., "receiv[ing] an indication that a first
parcel has been shipped for delivery, in a first shipping route, to a detected
7 We acknowledge that some of these considerations may properly be
evaluated under step 2 of the Mayo/Alice framework (Step 2B of the 2019
Revised Guidance). Solely for the purpose of maintaining consistent
treatment within the USPTO, we evaluate those considerations here under
step 1 of the of the Mayol Alice framework (Step 2A of the 2019 Revised
Guidance).
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location of the customer"), without any technical details for achieving that
result. Appellant, by this argument, suggests such details exist, but those
details are not reflected in the claim. For example, claim 13 does not specify
how to determine that "a first parcel has been shipped for delivery in a first
shipping route." Instead, "the claim language here provides only a result-
oriented solution with insufficient detail for how a computer accomplishes it.
Our law demands more." Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
We also do not agree with Appellant that there is any parallel between
the present claims and the claims at issue in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App.
Br. 17-18; see also Reply Br. 8-9, 19-20). There, the Federal Circuit held
that the second step of the Mayo/Alice framework was satisfied because the
claimed invention "represents a 'software-based invention[] that improve[s]
the performance of the computer system itself."' BASCOM, 827 F.3d
at 1351 (stating that like DDR Holdings, where the patent "claimed a
technical solution to a problem unique to the Internet," the patent in
BASCOM claimed a "technology-based solution ... to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems ... making it more dynamic and efficient") ( citations omitted).
We are not persuaded that combining shipments to a common location
to minimize the number of deliveries to that location is a technological
improvement comparable to that in BASCOM, rather than an improvement to
a business practice. And, to the extent that Appellant maintains that claims
are patent-eligible because there is no risk of preemption (App. Br. 21), we
note that preemption is not the sole test of patent-ineligibility. Although
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"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Responding to the Examiner's Answer in the Reply Brief, and citing
Enfzsh and McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299
(Fed. Cir. 2016), Appellant asserts that the Federal Circuit has repeatedly
held that software configurations that enable a computer to perform a
function not previously performable by a computer are patent-eligible
(Reply Br. 6). Appellant attempts to draw a parallel between the present
claims and the claims in Enfzsh and McRO. We do not agree, however, that
any such parallel exists.
Appellant argues that the present claims, like the claims in McRO,
enable computing systems to perform functions not previously performable
by a computer (id. ("Appellant respectfully submits that the present claims
clearly enable computing systems to perform previously impossible tasks,
and accordingly Appellant submits that the claims are directed to patentable
subject matter.")), and utilize limited rules in a process specifically designed
to achieve an improved technological result (id. at 13-16). But, we are not
persuaded that the present claims include "rules" that enable the computer to
aggregate shipments for concurrent delivery in the same way the specific
rules enabled the computer in McRO to generate the computer animated
characters. We also find no evidence of record that the present situation is
like the one in McRO where computers were unable to make certain
subjective determinations, i.e., regarding morph weight and phoneme
timings, which could only be made prior to the claimed invention by human
animators.
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The '576 patent, at issue in McRO, 8 describes that prior to the claimed
invention, character animation and lip synchronization were accomplished
by human animators, with the assistance of a computer, and involved the use
of a so-called "keyframe" approach in which animators set appropriate
parameters, i.e., morph weights, at certain important times, i.e., "keyframes,"
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription ( a "timed transcript"). Id. In accordance with the prior
technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id.
In McRO, the improvement in computer animation was realized by
using "rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes" (id. at 1313), i.e., in McRO, the
invention used "rules to automatically set a keyframe at the correct point to
depict more realistic speech, achieving results similar to those previously
achieved manually by animators." Id. at 1307. The rules in McRO, thus,
allowed the computer to produce accurate and realistic synchronization in
animated characters that could only previously be produced by humans.
We are not persuaded that any comparable situation is presented here.
Indeed, it could not be clearer from the Specification that the present
invention is intended to aggregate the delivery of multiple parcels intended
for the same location into a minimum number of deliveries at that location in
8 U.S. Patent No. 6,307,576.
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order to reduce the costs and inefficiencies associated with the delivery
process (see, e.g., Spec. ,r,r 2--4, 11 ). Considered in light of the
Specification, the claimed invention, thus, appears focused on addressing a
business objective, i.e., "provid[ing] a customer-convenient, efficient and
cost-effective means of combining a plurality of parcels intended for
delivery at a specific location by a carrier into a minimum number of
deliveries at that location" (id. ,III), and not on any claimed means for
accomplishing this goal that improves technology.
We also do not agree with Appellant that the present claims, like those
at issue in DDR Holdings, are "specifically directed to concepts for solving a
problem arising exclusively in a computer-network environment" (Reply
Br. 17). Appellant asserts that the pending claims "explicitly recite features
for determining whether electronic shipping data indicates that
corresponding physical shipments are eligible for concurrent delivery"; that
"the recited computing components are required to undertake an additional
substantive analysis of the electronic shipment information for each of the
plurality of shipments to determine whether various shipments are eligible
for concurrent delivery" because the electronic shipping data does not
necessarily indicate that shipments are originally scheduled for delivery on a
common delivery date; and that "the various steps of the analysis must be
configured to address the computational limitations of computing processors
for undertaking fuzzy logic algorithms to establish possible matches between
electronic shipment information records based on inexact informational
matches" (id. at 17-18). Appellant, thus, maintains that the present claims,
like those in DDR Holdings, "address computer-specific problems for
automatically identifying electronic shipment data indicative of potential
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concurrent delivery shipment candidates," and are directed to patent-eligible
subject matter under § 101 (id.).
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host's website after "clicking"
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
patent-eligible subject matter because they claim a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
We are not persuaded that determining whether various shipments are
eligible for concurrent delivery is a problem particular to, or arising from,
computer networks and/ or the Internet. And, although Appellant argues that
the claims "address computer-specific problems for automatically
identifying electronic shipment data indicative of potential concurrent
delivery shipment candidates," we find nothing in the claim language
regarding "automatically identifying electronic shipment data indicative of
potential concurrent delivery shipment candidates"; claim 13, for example,
merely recites "receiv[ing] an indication that a first parcel [having a known
first delivery date] has been shipped for delivery, ... to a detected location
of the customer"; "receiv[ing] an indication that a second parcel [having a
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known second delivery date that is different from the first delivery date] has
been shipped for delivery ... to the detected location of the customer"; and
either expediting delivery of the second parcel when the second delivery
date is after the first delivery date or delaying delivery of the second parcel
by the carrier when the second delivery date is before the first delivery date.
We conclude that claim 13 recites a commercial interaction, i.e., an
abstract idea, and that the additional elements recited in the claim are no
more than generic computer components used as tools to perform the
abstract idea of aggregating the delivery of parcels to a customer. As such,
they do not integrate the recited abstract idea into a practical application.
See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer
implementation is not generally the sort of' additional feature[ e]' that
provides any 'practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself."' (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 13 is
directed to an abstract idea. 9
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 13 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 13 adds specific limitations beyond the judicial exception that
9 Because we conclude that claim 13 reasonably may be characterized as
directed to a commercial interaction, we need not determine whether
claim 13 recites a process that can be performed in the human mind or by a
human using pen and paper, and, therefore, may also be characterized
reasonably as directed to a mental process, which is considered an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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are not "well-understood, routine, conventional" in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the claimed processor, memory, and
database, i.e., generic computer components used to perform generic
computer functions (Final Act. 3, 6)- a determination amply supported by
and fully consistent with the Specification (see, e.g., Spec. ,r,r 14--15). 10
Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether operation of the claimed
processor is well-understood, routine, or conventional, where, as here, there
is nothing in the Specification to indicate that the operations recited in
claim 13 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using anything
other than generic computer components to perform generic computer
functions, e.g., receiving, storing, and processing information. Indeed, the
Federal Circuit, in accordance with Alice, has "repeatedly recognized the
10 The Office's April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)," available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419 .pdf, expressly directs that an examiner may
support the position that an additional element ( or combination of elements)
is not well-understood, routine or conventional with "[a] citation to an
express statement in the specification ... that demonstrates the well-
understood, routine, conventional nature of the additional element(s)" (id.
at 3).
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absence of a genuine dispute as to eligibility" where claims have been
defended as involving an inventive concept based "merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality." Berkheimer v. HP, Inc., 890
F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted);
see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir.
2018) ("BSG Tech does not argue that other, non-abstract features of the
claimed inventions, alone or in combination, are not well-understood,
routine and conventional database structures and activities. Accordingly, the
district court did not err in determining that the asserted claims lack an
inventive concept.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 13 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 13, and claims 14, 15, 66, 68, 70-76, 79, and
80, which fall with claim 13.
DECISION
The Examiner's rejection of claims 13-15, 66, 68, 70-76, 79, and 80
under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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