Ex Parte Uslontsev et al

Patent Trial and Appeal Board

Feb 6, 2019

12169509 (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/169,509 07/08/2008 Aleksandr U slontsev
25315 7590 02/08/2019
LOWE GRAHAM JONES, PLLC
701 FIFTH A VENUE
SUITE4800
SEATTLE, WA 98104
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.
ZFRM-1-2501 9406
EXAMINER
ERB,NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEKSANDR USLONTSEV,
RAFAEL ZIMBEROFF, and STANISLAV TUGUSHEV
Appeal2017-004956 1
Application 12/169,509
Technology Center 3600
Before MICHAEL W. KIM, NINA L. MEDLOCK, and
PHILLIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 19, 20, and 25--42.
We have jurisdiction to review the case under 35 U.S.C. §§ 134(a) and 6(b ).
The invention relates generally to "producing shipping labels based on
information included in a shipping uniform resource identifier." Spec. ,r 1.
Independent claim 25 is illustrative:
25. A non-transitory computer-readable storage
medium including contents configured to cause a client
1 The Appellant Z-Firm LLC as the real party in interest. Appeal Br. 1.
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Application 12/169,509
computing system to perform a method for producing shipping
labels, the method comprising:
producing, in accordance with a shipping protocol
specified by a shipping uniform resource identifier, a shipping
label for a shipment of an item, by:
receiving scheme data from the shipping uniform
resource identifier, the scheme data specifying a first item
shipment action and a second item shipment action;
generating the shipping label by performing the first
item shipment action specified by the scheme data; and
automatically posting, based on the second item
shipment action specified by the scheme data, information
about the shipment back to a first computing system that
is remote and separate from the client computing system.
Claims 19, 20, and 25--42 are rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 19, 20, 25, and 27--42 are rejected under 35 U.S.C. § I02(b) as
anticipated by Mundy (U.S. Patent App. Pub. No. 2005/0114222 Al, pub.
May 26, 2005).
Claims 25-28, 30, 35, and 37--42 are rejected on the ground of non-
statutory double patenting as not patentably distinct from claims 1, 7-12,
18-20, 22-24, and 26 of U.S. Patent No. 8,126,821 Bl, issued: Feb. 28,
2012.
Claims 25-28, 36, 37, and 39--42 are provisionally rejected on the
ground of non-statutory double patenting as not patentably distinct from
claims 21, 27, 29-31, 34--37, and 40 of U.S. Patent App. No. 14/338,183.
We AFFIRM.
DOUBLE PATENTING REJECTIONS
Claims 25-28, 30, 35, and 37--42 are rejected on the ground of non-
statutory double patenting as not patentably distinct from claims 1, 7-12,
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18-20, 22-24, and 26 of U.S. Patent No. 8,126,821 Bl, issued Feb. 28,
2012. Claims 25-28, 36, 37, and 39--42 are provisionally rejected on the
ground of non-statutory double patenting as not patentably distinct from
claims 21, 27, 29-31, 34--37, and 40 of U.S. Patent App. No. 14/338,183.
The Appellants do not set forth any arguments that identify any error made
by the Examiner with respect to these rejections. Accordingly, these
rejections are summarily sustained.
PRINCIPLES OF LAW CONCERNING 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.
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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
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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 ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "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 that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; 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. ( 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.").
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
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concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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. (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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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.
See Guidance.
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ANALYSIS
Rei ection Under 3 5 US. C. 101
The Examiner asserts that independent claim 1 is directed to
"producing a shipping label." Ans. 2. We agree. Independent claim 1
recites a "method for producing shipping labels," "producing ... a shipping
label," and "generating the shipping label by performing the first item
shipment action specified by the scheme data." For the penultimate
limitation, for the purposes of this analysis, we do not impart any
significance to the claim language beyond "generating the shipping label."
Specifically, all the balance of the claim limitation recites is to perform the
specified "first item shipment action." When we look to the previous
limitation, however, which recites "receiving scheme data from the shipping
uniform resource identifier, the scheme data specifying a first item shipment
action and a second item shipment action," all that limitation recites is that
the "first item shipment action" was received, without specifying further
how the "first item shipment action" is performed. When that analysis is
applied to "generating the shipping label by performing the first item
shipment action specified by the scheme data," we arrive at the circular
determination of "generating the shipping label" by performing the action of
"generating the shipping label." Such limitations are not entitled to
patentable weight in this inquiry. Praxair Distrib., Inc. v. Mallinckrodt
Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) ("Claim
limitations directed to the content of information and lacking a requisite
functional relationship are not entitled to patentable weight because such
information is not patent eligible subject matter under 35 U.S.C. § 101.").
We discern no substantive difference between "producing a shipping label"
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and "generating the shipping label," and, indeed, the Examiner uses the
phrases interchangeably. See, e.g., Final Act. 4 (using both formulations).
For the purposes of consistency with the Examiner, we use "producing a
shipping label" going forward.
The Appellants assert that the Examiner has over-generalized the
claims. App. Br. 5-7. Specifically the Appellants assert that "producing a
shipping label" is merely four words of independent claim 25, which
improperly ignore 116 others. As an initial matter, we note that under the
Guidance, all that is necessary is to identify "whether the claim recites ...
any judicial exceptions .... " 84 Fed. Reg. at 52. To that end, the
Examiner's identification is proper.
Even when the claim is considered as a whole, however, we are
unpersuaded that our analysis is any different. Specifically, every claim
limitation concerns "producing a shipping label." For example, independent
claim 1 recites "receiving scheme data from the shipping uniform resource
identifier, the scheme data specifying a first item shipment action and a
second item shipment action." Of those terms, for the purposes of this
analysis, we do not impart any significance to "scheme," "shipping uniform
resource identifier," or "item shipment," as they are merely content
information with no functional relationship to the rest of the claim. Praxair
Distrib., Inc., 890 F.3d at 1032. For example, we are unclear as to the
significance of receiving data from the "shipping uniform resource
identifier," as opposed to some other data source, for the purposes of this
inquiry. Accordingly, we are left with "receiving data specifying a first
action and a second action." Setting aside that this is both the mental
process of observing (84 Fed. Reg. at 52, footnote 15) and insignificant
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extra-solution activity (Manual of Patent Examining Procedure 2106.0S(g)),
we are unclear how one would go about "producing a shipping label"
without receiving information about the shipping label. Thus, the
aforementioned "receiving" step is subsumed within "producing a shipping
label." Our analysis is similar for the limitation of "automatically posting,
based on the second item shipment action specified by the scheme data,
information about the shipment back to a first computing system that is
remote and separate from the client computing system," in that it is also
subsumed within "producing a shipping label."
The Examiner asserts further that "producing a shipping label" is a
part of "shipping" which is "typically a commercial activity," and that "a
shipment would typically be part of a commercial transaction" which is a
"fundamental economic practice." Final Act. 4. The Appellants assert that
"producing a shipping label" is an action substantively different from
fundamental economic practices such as "creating contractual relationships,
hedging, or mitigating settlement risk" determined to be patent in-eligible by
the courts. App. Br. 7-8. We agree. The manner in which the Examiner's
analysis is couched is that "producing a shipping label" is typically used in
implementing a fundamental economic practice. The problem is that, as
asserted by the Appellants, any action could be defined as having some use,
even a typical one, in implementing a fundamental economic practice.
Instead, the Appellants assert, and we agree, that the proper analysis is
whether, like "hedging" and "intermediated settlement," "producing a
shipping label" itself is a fundamental economic practice. We determine that
it is not. Among other reasons, unlike "hedging" and "intermediated
settlement," there are no terms in "producing a shipping label" that are
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primarily economic in nature. The closest term is "shipping," however, we
find that "shipping" is not primarily an economic term. See e.g., Shipping
(verb), DICTIONARY.COM, https://www.dictionary.com/browse/shipping
(last visited Feb. 1, 2019). ("to put or take on board a ship or other means of
transportation; to send or transport by ship, rail, truck, plane, etc."; "to place,
transport, or travel on any conveyance, esp aboard a ship."). And when the
lack of a primarily economic term is considered in conjunction with the fact
that "producing a shipping label" results in a tangible output, i.e., "a label,"
we are persuaded that "producing a shipping label" is not a fundamental
economic practice. 2
We do not sustain this rejection of independent claim 2 5, or its
dependent claims 19, 20, 26-39, and 42. Our analysis is the same for
independent claim 40, and its dependent claim 41.
Reiection Under 35 USC 102(b)
We are unpersuaded the Examiner erred in finding that Mundy
anticipates independent claim 25. App. Br. 17-20. In relevant part,
independent claim 25 recites "contents configured to cause a client
computing system to perform a method for producing shipping labels,"
while dependent claim 26 further recites that "the contents include
instructions that, when executed by the client computing system, cause the
client computing system to perform the method." The Appellants assert that
2 To be sure, the presence of a tangible output is not, by itself, determinative.
For example, an action with a tangible output, such as "purchasing a
shipping label," may nevertheless be a fundamental economic practice
because the term "purchasing" is economic. We merely note that the
presence of a tangible output is a factor that can be considered in
determining whether something is a fundamental economic practice.
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there is an insufficient basis to reject the former over Mundy, while not
rejecting the latter over the same. We disagree.
The Appellants are asserting that if the Examiner accepts that the
latter limitation is configured to cause functional changes in a computer,
there is no reason to treat the former differently, as it also, by its own terms,
is configured to cause functional changes in a computer. The problem is that
independent claim 25 must be read in light of dependent claim 26, the
relevant portions of which read as follows:
Independent claim 25 contents configured to cause a client computing
system to perform a method for producing
shipping labels
Dependent claim 26 contents include instructions that, when executed
by the client computing system, cause the client
computing system to perform the method
Under the doctrine of claim differentiation, independent claim 25
encompasses "content" that "cause a client computing system to perform a
method for producing shipping labels" that are not computer-implemented
"instructions" for doing the same. And as asserted by the Appellants, the
claimed "instructions" are very broad: "instructions can be represented as
data that is expressed according to different types of languages or levels,
such as in binary (e.g., machine instructions), mnemonics (e.g., assembly
language), or words and algebraic notation ( e.g., high-level programming
languages)." App. Br. 18-19 (citing Evidence Appendix 3, 11-12, 76-77,
100-101 ). The Examiner's position essentially is that if "content"
encompasses subject matter broader than the already broad term
"instructions," than any "content," in whatever form, is capable of
"caus[ing] a client computing system to perform a method for producing
shipping labels." Ans. 8. If that is the case, Mundy certainly discloses
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"content" in some form. We are unpersuaded the Examiner has erred in that
respect. As noted in our Decision on Second Request for Rehearing:
Appellants have not shown persuasively why the information set
forth in the data structures of Mundy does not meet the allegedly
unconsidered more than 100 words of independent claim 23, i.e.,
why the specific information set forth in the data structures of
Mundy cannot correspond to the recited shipping related
information. For example, we are unclear whether Appellants
are arguing that the syntax or format of the information set forth
in the data structure in Mundy does not meet the allegedly
unconsidered words of independent claim 23, or whether the
information is deficient in other respects. The fact that Mundy
itself may not disclose anything about shipping is inapposite
when, essentially, independent claim 23 recites a data structure
with two pieces of data organized via a colon delimiter, and the
claim does not articulate further any specific characteristics
about the information itself that would indicate to one of ordinary
skill that one expression of information is "shipping related,"
while another expression of information is not.
Ex parte Aleksandr Uslontsev et al., Appeal 2012-000905, slip op. at 2
(PTAB Feb. 2, 2015). As noted by the Examiner, although the claim
language has certainly changed, the overall logic still holds, an assessment
with which we agree. Ans. 8.
For the above reasons, we sustain the rejection of independent
claim 25 and claims 19, 20, 25, 27-39, and 42 which depend ultimately
therefrom. We also sustain the rejection of independent claim 41 and
dependent claim 42 for the same reasons.
DECISION
We AFFIRM the rejection of claims 19, 20, 25, and 27--42 under
35 U.S.C. § 102(b).
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We AFFIRM the rejections of claims 25-28, 30, and 35--42 for non-
statutory double patenting.
We REVERSE the rejection of claims 19, 20, and 25--42 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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