Louie F. Pento et al.

Patent Trials and Appeals Board

Dec 26, 2019

12212404 - (D) (P.T.A.B. Dec. 26, 2019)

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.
12/212,404 09/17/2008 Louie F. Pento 08049.0980-01 1259
22852 7590 12/26/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIE F. PENTO, DANIEL S. STIREWALT,
JOHN T. EDGAR, and ROBERT L. OTTO
Appeal 2018-006938
Application 12/212,404
Technology Center 3600
Before DENISE M. POTHIER, JENNIFER L. MCKEOWN, and
JASON M. REPKO, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the
Examiner’s decision to reject claims 1, 2, 5–10, 54, 55, and 58–65, which
are all the pending claims. Appeal Br. 6. We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as United States
Postal Service. Appeal Br. 4.
2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
July 11, 2017, the Appeal Brief (Appeal Br.) filed December 11, 2017, the
Examiner’s Answer (Ans.) mailed April 23, 2018, and the Reply Brief
(Reply Br.) filed June 25, 2018.
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CLAIMED SUBJECT MATTER
The claims are directed to “provid[ing] methods and systems for
creating and maintaining customs declaration forms in an electronic format
enabling paperless and expedient forwarding, review, search, and storage via
digital means, such as with a computer-based network.” Spec. ¶ 8.
Claim 1 is reproduced below:
1. A method for creating and reviewing a customs declaration
form, comprising:
[a] receiving a mailpiece having a first unique identifier
at a facility of a service provider of an originating country;
[b] capturing an image of the mailpiece, using an optical
device;
[c] converting the image into an electronic customs
manifest;
[d] forwarding the electronic customs manifest to a
customs service of the originating country before an
international mail piece with an attached customs declaration
form arrives at the customs service of the originating country;
[e] determining, based on the electronic customs
manifest, whether to allow the international mailpiece to leave
the originating country without further inspection, before the
international mail piece arrives at the customs service of the
originating country;
[f] transmitting the electronic customs manifest to a
reading device when it is determined that the international
mailpiece may not leave the originating country, the electronic
customs manifest being stored in the reading device;
[g] reading, using the reading device, a second unique
identifier on the attached customs declaration form that is
attached to the international mailpiece; and
[h] permitting the international mailpiece to leave the
originating country when the second unique identifier does not
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match the first unique identifier of [the electronic customs
manifest]3 stored in the reading device.

Appeal Br. 40 (Claims App.) (bracketing added and referring to the
recitations as step [a] through step [h] respectively).
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2016). On the record before us, we are not persuaded the
Examiner has erred.

PATENT INELIGIBILITY REJECTION
The Rejection and Arguments
The Examiner found the claims in this application are directed to a
judicial exception: an abstract idea. Final Act. 19–20; see id. at 10–11. The
Examiner identifies various limitations in the claims as additional elements,
indicating these elements are extra-solution activities and generic machines
that do not improve technology. Id. at 10, 20. The Examiner even further
states the implementation of these elements “would be routine and
conventional.” Id. at 20; see id. at 13.
Appellant argues: (1) the Examiner failed to present a prima facie
basis under 35 U.S.C. § 101 (Appeal Br. 12–13), (2) the claims are not
directed to an abstract idea but rather recite a specific means for creating and

3 The Claims Appendix in the Appeal Brief does not include the bracketed
language. Appeal Br. 40 (Claims App.). However, the last entered
amendment submitted on July 15, 2016 with the Request for Continued
Examination includes this language.
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maintaining customs declaration forms that expedient forwarding,
reviewing, searching, and storing (id. at 13–18, 20–26), (3) the Examiner did
not identify a subject matter in the claims similar to what the courts have
found to be abstract ideas (id. at 18–20), (4) the claims involve an
improvement to computer functionality (id. at 19) and enable a technological
improvement over existing forms of communication ((id. at 24–26), and (5)
the Examiner did not provide a reasoned explanation that supports the
additional elements are well-understood, routine, and conventional activities
and the particular arrangement of the steps in the claims represent a
non-conventional and non-generic arrangement as in BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016) (id. at 26–35).
Appellant argues claims 1, 2, 5–10, 54, 55, and 58–65 as a group.
Appeal Br. 12–35. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Issue
Under § 101, has the Examiner erred in rejecting claim 1 by
determining that the claims are directed to judicially excepted, patent
ineligible subject matter?
Principles of Law
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. Mayo Collaborative Servs. v. Prometheus Labs.,
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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(185))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn 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.
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the
Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (Revised Guidance, 84 Fed. Reg. at 52–54); and
(2) additional elements that integrate the judicial exception into a
practical application (see the Manual of Patent Examining Procedure
(MPEP) §§ 2106.05(a)–(c), (e)–(h)) (Revised Guidance, 84 Fed. Reg.
at 53–55).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application (“Revised Step 2A”), do we then look
to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56 (“Step 2B”).
Analysis
At the outset, we disagree with Appellant that the Examiner did not
establish a prima facie case of patent-ineligibility. See Appeal Br. 12–13;
Reply Br. 2–3. The rejection (Final Act. 19–20) is consistent with the two-
step framework described in Alice and Mayo. See Alice, 573 U.S. at 217–18;
see also Mayo, 566 U.S. at 75–77. The Examiner identified various steps in
claim 1 that are directed to a judicial exception (Final Act. 19–20; Ans. 3–4).
The Examiner also determined the additional elements in claim 1, alone or
collectively, are not sufficient to amount to significantly more than the
judicial exception. For example, the Examiner identified additional
elements in claim 1, describing some of these elements as generic computer
elements (e.g., an optical device) and others as insignificant extra-solution
activity (e.g., transmitting information, such as forwarding the electronic
customs manifest to a customs service). Final Act. 20. Further, the
Examiner explained claim 1 does not recite “a non-conventional and non-
generic arrangement of known, conventional pieces, but instead uses known
and conventional equipment in customs processing, used in a conventional
manner.” Id. at 13; see Ans. 6, 12, 14–16.
Alice Step One
Claim 1 recites a method and, therefore, falls within the process
category of § 101. See Revised Guidance, 84 Fed. Reg. at 53–54. Despite
falling within a statutory category, we must determine whether claim 1 as a
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whole is directed to a judicial exception, namely an abstract idea. See Alice,
573 U.S. at 217. To this end, we determine (1) whether claim 1 recites a
judicial exception (“Revised Step 2A - Prong 1”) and, if so, (2) whether the
identified judicial exception is integrated into a practical application
(“Revised Step 2A – Prong 2”). See Revised Guidance, 84 Fed. Reg. at
52–55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
Revised Step 2A - Prong 1
In step, we identify claim 1’s specific limitations that recite a judicial
exception, and determine whether the identified limitations fall within
certain subject matter groupings, namely (a) mathematical concepts
(mathematical relationships, formulas, and calculations); (b) certain methods
of organizing human activity (e.g., fundamental economic practices,
commercial or legal interactions, and managing personal behavior or
interactions between people); or (c) mental processes (e.g., concepts
performed in the human mind including an observation, evaluation,
judgment, or opinion). See Revised Guidance, 84 Fed. Reg. at 52. We agree
with the Examiner (see Final Act. 19–20) that claim 1 recites at least one
judicial exception.
Claim 1 recites a “method for creating and reviewing a customs
declaration form” the method “comprising:” limitations [a] (i.e., “receiving a
mailpiece having a first unique identifier at a facility of a service provider of
an originating country”), [e] (i.e., “determining, based on the . . . customs
manifest, whether to allow the international mailpiece to leave the
originating country without further inspection, before the international mail
piece arrives at the customs service of the originating country”), [g] (i.e.,
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“reading . . . a second unique identifier on the attached customs declaration
form that is attached to the international mailpiece”), and [h] (i.e.,
“permitting the international mailpiece to leave the originating country when
the second unique identifier does not match the first unique identifier of [the
mailpiece].”) Appeal Br. 40 (Claims App.).
Like the Examiner found (see Final Act. 19–20; see also Ans. 4), the
above steps [a], [e], [g], and [h] recite a process for reviewing customs
declaration forms before an international mail piece leaves its originating
country. See Final Act. 10–11 (stating the claim is “directed towards
creating . . . customs declaration forms for forwarding, reviewing, searching
and storing”); see also Ans. 13 (stating the same). The Specification
similarly describes the invention as a method “for creating and maintaining
customs declaration forms in an electronic format enabling . . . forwarding,
review, search, and storage.” Spec. ¶ 8. As explained below in more detail
and contrary to Appellant’s contentions (Appeal Br. 13–16, 19–20), these
limitations as a whole recite a judicial exception set forth in the Revised
Guidance.
For example, “receiving a mailpiece having a first unique identifier at
a facility of a service provider of an originating country” (e.g., receiving an
unattached customs declaration form (Spec. ¶ 5)) as step [a] recites is an
activity that would ordinarily take place when attempting to mail an
international mailpiece, which includes providing copies of the customs
declaration form to a customs service. See id. ¶¶ 5, 7 (describing the current
process that stores a copy of customs declaration form at the customs service
of the originating country from which an international mailpiece is mailed
and the customs service may examine the copy prior to the international
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mailpiece with an attached customs declaration form leaving the country).
Reviewing customs declaration forms related to an international mailpiece
ordinarily involves (3) determining which mailpieces to inspect based on the
information on the customs declaration form as recited in step [e], (4)
reading unique identifiers on the attached customs declaration form attached
to the international mailpiece as step [g] recites and (5) permitting the
international mailpiece to the leave the originating country when the
international mailpiece’s unique identifier does not match the related
customs declaration form’s unique identifier (e.g., enclosed items on form’s
list does not merit screening the international mailpiece’s contents) as step
[h] recites. See id. ¶¶ 3–4, 7.
Mailing an international mail piece is a commercial interaction and
reviewing customs declaration forms before an international mail piece
leaves its originating country is part of this commercial transaction. See
Final Act. 16 (stating the claims are a “business service and economic
tasks”); see Ans. 15 (same). Like the concept of intermediated settlement in
Alice and the concept of processing an application for financing a purchase
(e.g., a financial industry practice) in Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017), reviewing customs declaration
forms before an international mail piece leaves its originating country is a
commercial interaction. See also Secured Mail Solutions LLC v. Universal
Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017) (determining its claims are
directed to “the abstract idea of using a marking affixed to the outside of a
mail object to communicate information about the mail object, i.e., the
sender, recipient, and contents of the mail object.”).
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Accordingly, we conclude claim 1 recites a commercial interaction,
which is one of certain methods of organizing human activity identified in
the Revised Guidance. See 84 Fed. Reg. at 52. For the above reasons, we
determine claim 1 recites an abstract idea.
Revised Step 2A - Prong 2
Because claim 1 recites a judicial exception, we must determine
whether the judicial exception is integrated into a practical application,
namely whether the claim applies, relies on, or uses the judicial exception in
a manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exceptions. See Revised Guidance, 84 Fed. Reg. at 53. We (1) identify
whether there are any additional, recited elements beyond the judicial
exception, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
See id., 84 Fed. Reg. at 54–55.
The additionally recited elements beyond the above-identified judicial
exception in claim 1 are steps [b]–[d] and [f], “an optical device,” “an
electronic customs manifest,” and “a reading device.” See Final Act. 20.
Independent claim 59 additionally recites a “non-transitory computer-
readable medium” (Appeal Br. 43 (Claims App.)), and independent claim 54
additionally recites “a receiving component,” “mail processing equipment,”
“a scanner,” “an imaging component,” “a conversion component,” “a
forwarding component,” “a determination component,” “a transfer
component,” “a matching component,” and “a confirming component.” See
id. at Appeal Br. 42–43 (Claims App.); Final Act. 20. When considering
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these elements individually or in combination, we determine they do not
integrate the above-identified judicial exception into a practical application.
Rather, the additionally recited elements merely automate the above-
identified judicial exception using generic computer elements as tools,
which do not constitute an improvement in a computer or computer
technology. See Final Act. 20; see Credit Acceptance Corp., 859 F.3d at
1055 (discussing “the claims permit automation of previously manual
processing of loan applications”); see also Alice, 573 U.S. at 223–24
(discussing “wholly generic computer implementation is not generally the
sort of ‘additional featur[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)).
For example, the claimed “optical device” and “reading device” in
claim 1 are tools to perform the identified judicial exception, including steps
[b], [f], and [g], but do not further recite an improvement to these devices or
on how they function. Appeal Br. 40 (Claims App.). Similarly, independent
claim 59 does not recite a technological improvement in the recited “non-
transitory computer-readable medium” or its functionality, but rather the
medium is a tool to store and execute instructions. See Appeal Br. 43–44
(Claims App.)). The Specification also indicates these components are
generic, not particular, and do not discuss an improvement on these
components or how they function. See, e.g., Spec. ¶¶ 25,4 33, 44 (describing
an optical device taking an image of a customs declaration form and a

4 Upon review, we are unable to find reference to a “medium” in the
Specification. Appellant cites to various paragraphs for support. Appeal Br.
10 (citing Spec. ¶¶ 9–10 and 25–26, Fig. 2).
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scanner device scanning another customs declaration form attached to the
international mailpiece); see Ans. 16 (stating “an optical device is used to
generated a digital image of a document” and “a reading device is used to
read unique identifiers on mailpieces”).
Likewise, the recited “scanner” in claim 54 is a generic computer tool
that performs reading functions (i.e., “read . . . the first unique identifier on
the mailpiece”) but does not recite a technological improvement in this
scanner or on how it operates. Appeal Br. 42 (Claims App.). Moreover,
Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d
1343 (Fed. Cir. 2014), indicates that a scanner performs “the basic concept
of data recognition and storage” (id., 776 F.3d at 1347), as step [f] recites,
which does not distinguish a claim from those found to be abstract like in
Alice. See id. (citing Alice, 573 U.S. at 219); see DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014) (stating “recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible”).
Appellant argues an analysis that the claims are not directed to an
improvement in technology but rather implement a generic computer in a
conventional manner is “irrelevant to the whether the claims[’] focus is on a
specific means or method as opposed to a result or effect.” Appeal Br. 18;
id. at 16–18, 23–26 (citing McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (stating “We therefore look to
whether the claims in these patents 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.”)), 21–23 (further citing Amdocs, 841 F.3d at 1294 and DDR
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Holdings, 773 F.3d 1245, and discussing the same). More specifically,
Appellant argues steps [e]–[h] recite “a particular sequence of events,”
which “is a specific means of achieving a result—paperless and expedient
forwarding, review, search, and storage via digital means.” Appeal Br. 23
(citing Spec. ¶ 8). We are not persuaded.
Notably, the abstract idea itself cannot integrate the abstract idea into
a practical application. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1093 (Fed. Cir. 2019). Thus, as previously indicated in our discussion
under Prong 1, steps [e], [g], and [h] are part of the abstract idea with the
exception of the limitations to the “electronic customs manifest” and the
“reading device.”
Also, the court in McRO found that the “incorporation of the claimed
rules, not the use of the computer, [] ‘improved [the] existing technological
process’ by allowing automation of further tasks.” McRO, 837 F.3d at 1314
(quoting Alice, 573 U.S. at 223) (second bracketing in original). In McRO,
“[t]he claimed process uses a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results: a sequence of synchronized, animated characters.” Id. at
1315. In contrast, claim 1 recites “rules” for when to transmit the electronic
customs manifest (e.g., “when it is determined that the international
mailpiece may not leave the originating country”) in step [f] based on
determining step [e] and when to permit the international mailpiece to leave
the originating country (e.g., “when the second unique identifier does not
match the first unique identifier”) in step [h]. Yet, these rules in claim 1’s
steps [f] and [h] do not render information into any format—let alone a
specific format like in McRO—, which is then used and applied to create a
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desired result like McRO’s sequence of synchronized, animated characters.
At best, claim 1, including steps [e]–[h], improves on how to process
mailpieces. But improving on how to process mail is not technology and
does not amount to an improvement in an existing technology contrary to
Appellant’s contention. Compare Ans. 14 (discussing the claimed process
involves “preauthoriz[ing] mailpieces before leaving the originating
country”), with Reply Br. 4 (stating the claims “improve[s] mailpiece
processing technology”).
To the extent Appellant’s contends the “electronic customs manifest”
is a specific format used to create a desired result (see Appeal Br. 16–26),
claim 1 does not recite a particular or new format for electronic customs
manifest and does not improve on reading or scanning unique identifiers on
a customs declaration form, or a similar improvement in computer
functionality. See Secured Mail, 783 F.3d at 910 (stating “the claims are not
directed to a new barcode format, an improved method of generating or
scanning barcodes, or similar improvements in computer functionality”).
Rather similar to Secured Mail, the additional elements (e.g., the electronic
customs manifest, the optical device, and the reading device) in claim 1 are
“non-specific and lack[s] technical detail.” Id. at 912.
Nor does claim 1 provide a specific organization or table of the
“electronic customs manifest” or an electronic customs manifest has benefits
over conventional electronic manifests, such that it improves the way a
computer stores or retrieves data from memory or another computer
functionality, like in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336–
38 (Fed. Cir. 2016). Rather, consistent with the Specification, the invention
“relates generally to providing customs declaration forms in an electronic
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format” (Spec. ¶ 1) and “provides methods and systems for creating and
maintaining customs declaration forms in an electronic format” (id. ¶ 8).
See Ans. 11–12.
The Specification further states its method and system “enabl[es]
paperless and expedient forwarding, review, search, and storage via digital
means, such as with a computer-based network.” Id. ¶ 8; see Ans. 13
(quoting the same). Yet, “the fact that the required [process] could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.” FairWarning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012); see also Secured Mail (stating “[t]he fact that an identifier can be
used to make a process more efficient, however, does not necessarily render
an abstract idea less abstract.”); see Ans. 15 (stating “the problem of
reducing review times in order to decrease delivery time . . . is not a
technological based problem.”) Thus, to the extent a digital means is recited
in claim 1 (see Appeal Br. 23), this recitation does not materially alter the
patent eligibility of claim 1.
Notably, McRO highlighted that its record “provided no evidence that
the process previously used by animators is the same as the process required
by the claims.” Id. at 1314. The court in McRO contrasts its claimed
invention with a “claimed computer-automated process and the prior method
[that] were carried out the same way.” Id. (contrasting with Flook, Bilski,
and Alice). Here, in contrast with McRO, the Specification demonstrates the
current process for permitting an international mailpiece from leaving its
originating country involves the customs service reviewing copies of the
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customs declaration forms and examining the attached customs declaration
form on international mailpieces to determine whether the international
mailpiece can leave the country. See Spec. ¶¶ 3–7. Unlike McRO’s claimed
invention, this record demonstrates the recited process in claim 1, including
aspects of steps [e]–[h], were previously used and the other aspects of steps
[e]–[h] merely automate the prior methods carried out the same manner. See
Ans. 6–7 (discussing the same). Thus, we disagree that claim 1’s steps [e]–
[g] make the claim patent eligible under § 101 as argued. See Appeal Br.
20–26.
For the above reasons, we determine the above-noted additional
elements beyond the identified judicial exceptions do not reflect an
improvement in a computer’s functioning or an improvement to other
technology or technical field as set forth in MPEP § 2106.05(a) and the
Revised Guidance, 84 Fed. Reg. at 55. See Ans. 8 (citing Spec. 19, 25–27,
37–38).
Additionally, converting the captured image into “an electronic
customs manifest” as step [c] recites merely automates the above-identified
abstract idea (e.g., reviewing customs declaration forms before an
international mail piece leaves its originating country) and involves
converting a physical document (e.g., the mailpiece) into an electronic
format (the “electronic customs manifest”) using at best a generic machine
(step [b] recites using an optical device to capture an image and step [c]
recites “converting the image into an electronic customs manifest” without
any details regarding what device performs the conversion). The conversion
in claim 1 thus does not implement the above-identified judicial exception
using a particular machine, such that the claim is integrated into a practical
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exception. See Benson, 409 U.S. at 67, 70–72 (holding converting BCD
(binary-coded decimal) numbers to pure binary numbers was not a patent-
eligible transformation under § 101). For example, recognizing an article
(e.g., a mailpiece) and manipulating the article into data (e.g., the electronic
customs manifest) does not sufficiently transform a particular article into a
different state such that it is patent eligible. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (stating “[t]he mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong.”)
As for independent claim 54, the claimed “receiving component,”
“mail processing equipment,” “imaging component,” “conversion
component,” “forwarding component,” “determination component,”
“transfer component,” “matching component,” and “confirming component”
are software components used to implement the receiving, mail processing,
imaging, conversion, forwarding, determination, transfer, matching, and
confirming functions respectively automatically but do not recite an
improvement in their functionality. See id. at Appeal Br. 42–43 (Claims
App.). That is, like Alice, these components are “wholly generic computer
implementation[s]” (id., 573 U.S. at 223) of their respect functions, which
are not the type of additional features that transform an abstract idea into a
patent-eligible invention. See id. at 221–223.
Accordingly, when considering the noted, additional elements
individually or in combination, they are no more than using computer
components as tools to perform and automate the above-identified abstract
idea.
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We add that recited steps [b]–[d] and [f] in claim 1 are also
insignificant extra-solution activities. See Final Act. 20. For example,
“capturing an image of the mailpiece, using an optical device” as step [b]
recites, “converting the image into an electronic customs manifest” as step
[c] recites, and “the electronic customs manifest being stored in the reading
device” as step [f] recites are insignificant extras-solution activities similar
to the activities of extracting and scanning data from a physical document in
Content Extraction. See Content Extraction, 776 F.3d at 1347 (noting that
its “claims merely recite the use of this existing scanning and processing
technology to recognize and store data from specific data fields such as
amounts, addresses, and dates.”)
Additionally, similar to the activities of sending and receiving
information in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014), “forwarding the electronic customs manifest to a customs service of
the originating country before an international mail piece with an attached
customs declaration form arrives at the customs service of the originating
country” as step [d] recites and “transmitting the electronic customs manifest
to a reading device when it is determined that the international mailpiece
may not leave the originating country” as step [f] recites are insignificant
extra-solution activities that do not add meaningful limitations to the above-
identified judicial exception. See id. at 1355 (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”); see also Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354–55 (Fed. Cir. 2016) (indicating selecting data based on
certain information for collection and analysis was considered insignificant
extra-solution activities).
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Steps [b]–[d] and [f] thus do not integrate the judicial exception into a
practical application for these additional reasons. See Guidance, 84 Fed.
Reg. at 55 (citing MPEP § 2106.05(g)).
Lastly, Appellant contends the rejection fails to compare the claims to
subject matter the courts determined to be directed to an abstract idea.
Appeal Br. 18–21 (citing Amdocs, 841 F.3d at 1294). We disagree for the
above reasons and, in particular, because Appellant recognizes the Examiner
discusses and compares Content Extraction (Reply Br. 5) as well as
buySAFE to the above claims as previously discussed. See Ans. 12–13.
For the above-stated reasons, we determine the additional elements
recited in claim 1 beyond the judicial exception, whether considered alone or
in combination, are not integrated into a practical application.
Alice Step Two, Step 2B
Because we determine claim 1 does not integrate the recited judicial
exception into a practical application, we need to consider whether the
additional elements add a specific limitation or combination of limitations
that are not well-understood, routine, or conventional activity in the field.
See Revised Guidance, 84 Fed. Reg. at 56. If so, this indicates that an
inventive concept may be present. If, instead, the additional elements
simply append well-understood, routine, and conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exceptions, this indicates that an inventive concept may not be
present. Id.
The Examiner further finds claim 1 does not improve a technology,
stating “merely invoking a generic machine to conduct the claimed method,
using conventional and routine processes, does not improve the technology
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itself.” Final Act. 10; id. at 20 (stating the implementation of the recited
generic computer elements “would be routine and conventional . . . .”); Ans.
14–16 (stating the same). The Examiner further states claim 1 fails to recite
“a non-conventional and non-generic arrangement of known, conventional
pieces, but instead use[s] known and conventional equipment in customs
processing, used in a conventional manner.” Final Act. 13. Specifically, the
Examiner indicates claim 1 “failed to claim any unconventional or non-
generic arrangement of pieces, as the Applicant has merely recited the
arrangement of components (a customs service for review mailpieces, a
reading device for reading the identifiers on mailpieces) in a generic and
conventional fashion.)” Id. at 16.
Appellant disagrees, arguing claim 1 recites significantly more than
the identified abstract idea (Appeal Br. 30–31) and is similar to the claims in
BASCOM and Amdocs, which were determined to solve a technological-
based problem in an unconventional manner (id. at 32–33; Reply Br. 8–9).
Appellant contends steps [e]–[h] (id. at 33), and more particularly steps [f]
and [h] (id. at 34), “necessarily require[] that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality” (id. at 33 (quoting Amdocs, 841 F.3d at 1300-01)),
thus reciting significantly more than an abstract idea. Id. at 34. Appellant’s
arguments are unavailing.
Absent the “using the reading device” recitation in step [g] and the
“stored in the reading device” limitation in step [h], we determine steps [g]
and [h] are part of the identified abstract idea and thus cannot be an
additional element that alone recites significantly more than the abstract
idea. Similarly, step [e] is part of the above-identified abstract idea of
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reviewing customs declaration forms before an international mail piece
leaves its originating country as previously explained. See Revised
Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements
should be evaluated in Alice/Mayo step two).
Also, the recited “reading device” and its storing function simply
append well-understood, routine, and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. For example, claim 1 recites the “reading device” at a high level
of generality and performing its routine and conventional activity—reading
information (i.e., a unique identifier in step [g]). See Spec. ¶¶ 33, 44; see
Ans. 16 (stating “a reading device is used to read unique identifiers on
mailpieces”); Content Extraction, 776 F.3d at 1347 (noting using a generic
scanner to recognize data performs a well-understood, routine, and
conventional activity commonly used in the industry). Similarly, the recited
“optical device” is recited generally and performs its routine activity. See
Spec. ¶ 25 (discussing using a camera to take an image of the customs
declaration form); see Ans. 16 (stating “an optical device is used to generate
a digital image of a document.”).
Step [f] additionally recites “the electronic customs manifest being
stored in the reading device” and step [h] recites a similar limitation, but
Content Extraction further indicates that a scanner, which is a reading
device, performs “the basic concept of data recognition and storage,” which
are “undisputedly well-known.” Content Extraction, 776 F.3d at 1347
(further noting that storing such information using a scanner is known
function); see Ans. 12 (stating “[t]here is no ‘inventive concept’ in [Content
Extraction]’s use of a generic scanner and computer to perform well-
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understood, routine, and conventional activities commonly used in the
industry”) (citing Alice, 573 U.S. at 225)); id. at 12–15. Secured Mail
similarly indicates “barcode scanners were generally known to those skilled
in the art.” Secured Mail, 873 F.3d at 912.
We thus disagree with Appellant (see Appeal Br. 28–29) that the
Examiner’s reasoning that the additional elements are recited generically
was improper. The additional elements in claim 1 alone or in combination
thus do not satisfy the inventive concept requirement. See Mort. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir.
2016); see Alice, 573 U.S. at 225; see buySAFE, 765 F.3d at 1355 (Fed. Cir.
2014).
Moreover, the “electronic customs manifest” recited in claim 1 has
content related to the unique identifier of the recited mailpiece, which is
used to determine whether (1) to allow an international mailpiece to leave
the country as step [e] recites, and (2) to transmit the manifest as step [f]
recites. Appeal Br. 40 (Claims App.). As such, step [f]’s transmission based
on a determination in step [e], which is further based on “the electronic
customs manifest,” is similar to “the idea of responding to or inquiring about
mail using a personalized identifier through the use of a marking . . . [,
which] has long been a conventional concept” as stated in Secured Mail.
Secured Mail, 873 F.3d at 912. Thus, the above-noted additional elements
found in the steps [e]–[h] do not add a specific limitation or combination of
limitations that are not well-understood, routine, or conventional activities.
We also disagree with Appellant that claim 1 solves a technological-
based solution, even with generic components, in an unconventional manner
like the claims in BASCOM and Amdocs. See Appeal Br. 31–33 (citing
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BASCOM, 827 F.3d at 1351 and Amdocs, 841 F.3d at 1291). The claims in
BASCOM “carve out a specific location for the filtering system (a remote
ISP server) and require the filtering system to give users the ability to
customize filtering for their individual network accounts.” BASCOM, 827
F.3d at 1351. The court explained “[f]iltering content on the Internet was
already a known concept,” (e.g., a conventional activity) but that “the patent
describes how its particular arrangement of elements is a technical
improvement over prior art ways of filtering such content.” Id. at 1350. The
court in BASCOM found the additional elements amounted to an inventive
concept because of “the non-conventional and non-generic arrangement of
known, conventional pieces” (id.). The court in Amdocs arrive at a similar
conclusion. Amdocs, 841 F.3d at 1300 (stating “this claim entails an
unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases).”)
On this record, however, Appellant has not demonstrated claim 1
recites a particular arrangement that is a technical improvement over the
prior art way of reviewing customs declaration forms before an international
mail piece leaves its originating country similar to BASCOM and Amdocs.
We agree with the Examiner that claim 1 “use[s] known and conventional
equipment in customs processing, used in a conventional manner” (Ans. 14)
as previously discussed. Appellant has not shown sufficiently how the
particular sequence of steps [e]–[h] amount to a non-conventional and non-
generic arrangement of known elements. See Appeal Br. 31–33. In fact,
Appellant merely quotes steps [e]-[h] and then concludes these limitations
represent non-conventional and non-generic arrangement. Appeal Br.
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29–30, 34. Appellant’s arguments provide insufficient persuasive evidence
to substantiate its contention.
Notably, Appellant contends claim 1 recites a technology-based
solution because the Specification explains the claimed combination solves
the problem of reviewing “paper-based customs declaration form,” which
“significantly increases the delivery time of the international mailpieces.”
Appeal Br. 32 (citing Spec. ¶ 8). We are not persuaded. In this regard, we
agree with the Examiner that:
Appellant’s claims are not directed towards a technological
based problem, but instead an economic and business based
problem. As noted by the Appellant, the problem addressed by
the Appellant’s claims is the problem of reducing review times
in order to decrease delivery time. This is not a technological
based problem, similar to filtering internet content (Bascom) or
massive record flows which previously required massive
databases (Amdocs), but instead is merely a business service
and economic task. The Appellant has not claimed . . . a new
technology for reviewing customs manifests, but instead the
manifests appear to be reviewed in a conventional manner (the
determination step) and are simply reviewed in advance of the
actual object arriving. . . [T]he Appellant has failed to claim any
unconventional or non-generic arrangement of pieces, as the
Appellant has merely recited the arrangement of components (a
customs service for review mailpieces, a reading device for
reading the identifiers on mailpieces) in a generic and
conventional fashion.

Ans. 15–16.
For the above reasons, Appellant fails to show sufficiently the recited
additional elements in claim 1 add a specific limitation or combination of
limitations that is not well-understood, routine, or conventional activity in
the field. As such, the additional recited elements—considered individually
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and as an ordered combination—do not add significantly more than the
abstract idea to provide an inventive concept under Alice/Mayo step two.
Conclusion
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 under § 101 and claims 2, 5–10, 54, 55,
and 58–65, which are not separately argued with particularity.
We next turn to the rejection based on the prior art.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Segal US 2003/0160095 A1 Aug. 28, 2003
Napier US 2003/0167240 A1 Sept. 4, 2003
Fang US 2004/0193435 A1 Sept. 30, 2004
Lin US 2006/0122843 A1 June 8, 2006

OBVIOUSNESS REJECTION OVER LIN, FANG, NAPIER, AND SEGAL
Claims 1, 2, 5–10, 54, 55, and 58–65 under 35 U.S.C. § 103(a) based
on Lin, Fang, Napier, and Segal. Final Act. 21–40. Regarding claim 1, the
Examiner finds that Lin teaches receiving a mail piece having a first unique
identifier and an attached customs declaration form and Fang teaches
forwarding an electronic customs manifest to a customs service before the
mail piece arrives at customs service of the originating country. Final Act.
21–22 (citing Lin ¶¶ 16–17, 21–22 and Fang ¶¶ 8, 17, 20, 22, 23). The
Examiner turns to Napier in combination with Lin and Fan to teach or
suggest “determining . . . whether to allow the international mailpiece to
leave the originating country,” “transmitting the electronic customs
manifest,” and “permitting the international mailpiece to leave the
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originating country” recitations. Id. at 23–24 (citing Napier ¶¶ 26, 52, 54,
57, 66, 69–71, 73, 76, and 82). Segal was cited to teach the “capturing an
image” limitation. Id. at 25 (citing Segal ¶¶ 7, 9, 20, 22, 23, 27, 31, 36–38).
Among other arguments, Appellant argues the above references fail to
teach the recited “transmitting the electronic customs manifest to a reading
device when it is determined that the international mailpiece may not leave
the originating country, the electronic customs manifest being stored in the
reading device” in claim 1. Appeal Br. 36–38; Reply Br. 9. Appellant
argues a manifest in Napier is transmitted to parcel data management system
62 but contends this transmission is not “when it is determined that the
international mailpiece may not leave the originating country” as recited in
claim 1. Reply Br. 10.

MAIN ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Lin, Fang, Napier, and Segal collectively would have taught or
suggested “transmitting the electronic customs manifest to a reading device
when it is determined that the international mailpiece may not leave the
originating country, the electronic customs manifest being stored in the
reading device”?

ANALYSIS
Based on the record, we find error in the obviousness rejection.
Notably, the phrase “reading device” in claim 1 is not found in the
Specification. See generally Spec. The Examiner takes the position that the
Specification “does not limit ‘the reading device’ to a single handheld
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scanner to other single piece of equipment.” Ans. 20. Although “Appellant
does not concede to this interpretation of Appellant’s claim” (Reply Br. 10),
Appellant does not offer an alternative interpretation. See id.
The Examiner’s construction is reasonable. The Specification
describes a barcode scanner device that can scan barcodes, which are unique
identifiers (e.g., “reading, using the reading device, a second unique
identifier on the attached customs declaration form that is attached to the
international mailpiece”). Id. ¶ 21. However, the Specification does not
further describe storing an electronic customs manifest in this scanner
device; rather, the disclosure teaches storing the manifest in a database (e.g.,
234). See id. ¶¶ 9, 27, 30, 36–37, 40, 44, Fig. 2. As such, the Specification
supports a broad construction of “a reading device” to include multiple
components, including a scanner and a database.
Even so, the record does not demonstrate sufficiently that Napier
teaches transmitting the electronic customs manifest to a reading device as
required by claim 1 (i.e., step [f]) and as mapped by the Examiner. In the
Answer, the Examiner explicitly maps the “reading device” to “the
components 88 and 62.” Ans. 20. In the Final Action, the Examiner
discusses “an advance electronic manifest” is transmitted to a customs
office. Final Act. 23–24. We thus presume the Examiner has mapped
“manifest 60” in Napier to the recited “electronic customs manifest” in claim
1. See id.
The Examiner relies on various paragraphs in Napier, when combined
with Lin and Fang, to teach and suggest the limitation in dispute. Final Act.
23–24 (citing Napier ¶¶ 26, 52, 54, 57, 66, 69–71, 73, 76, 82). However,
because the rejection relies mainly on Napier to teach the “transmitting” step
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(see id.), we confine most of our discussion to this reference. Of interest,
Napier teaches information/manifest 60 (Napier ¶¶ 52, 57) is transmitting to
central hub 58, which includes parcel data management system 62. Id. ¶ 52,
Fig. 3. This arguably also suggests the manifest is stored in the reading
device (e.g., mapped component 62), at least temporarily. However, this
passage does not teach or suggest when manifest 60 is transmitted to system
62 (see id.) as claim 1 requires (i.e., “when it is determined that the
international mailpiece may not leave the originating country”).
Upon review, Napier teaches manifest 60 is transmitted to system 62
prior to any determination related to whether the international mailpiece
may leave the country. That is, Napier discusses manifest 60 is transferred
to Customs processing system 70 to determine which parcels will be
inspected when they arrive at Customs and which parcels are released. See
id. ¶¶ 52, 57, Fig. 3 (showing manifest 60 is forwarded to system 70 from
system 62); see id. ¶¶ 59–66, 82; see Ans. 18 (stating the same). As such,
transmitting manifest 60 to system 62 does not occur when the reading
device determines the international mailpiece may not leave the originating
country as claim 1 requires.
Although Figure 3 shows a partial bidirectional flow of manifest 60
between systems 62 and 70 (see Napier, Fig. 3 (showing bidirectional flow
between element 62 and 60 but not between elements 60 and 70)), Napier
does not further discuss transmitting manifest 60 back to the system 62 when
or after system 70 determines that the international mailpiece may not leave
the originating country (e.g., after determining the mailpiece should be
inspected). At best, Napier discusses updating the Customs inspection
processing system (e.g., 70) through the inspection process (id. ¶ 71), taking
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notes about the parcels at the inspection location, and storing the notes and
the manifest (e.g., 60) (step 230) (id. ¶¶ 72, 76, Fig. 4). But, Napier does not
discuss the stored manifest is transmitted back to system 62—let alone
“when it is determined that the international mailpiece may not leave the
originating country” as claim 1 recites. Instead, Napier suggest the data is
stored in a data file in a database (e.g., 74) located on Customs processing
system 70. Id. ¶¶ 26, 54, Fig. 3.
Napier also discusses forwarding the parcel to partially automated
sorting system 88 (which the Examiner also maps to the recited “reader
device”) that routes parcels to a brokerage or location for inspection. See id.
¶¶ 69–71, 73, Fig. 4 (steps 222–228); see Ans. 19 (quoting Napier ¶ 69).
But, this passage does not teach or suggest transmitting the mapped
“electronic customs manifest” (e.g., 60) to the mapped “reading device”
(e.g., system 88) “when it is determined that the international mailpiece may
not leave the originating country, the electronic customs manifest being
stored in the reading device” as recited in claim 1. Moreover, although
Napier discusses the conventional practice, using paper manifest, would not
release a shipment “prior to presenting the paper manifest to Customs” (id.
¶ 70), Napier’s invention does not teach or suggest transmitting the
electronic customs manifest to a reading device when the reading device
determines the international mailpiece may not leave the country (id. ¶ 71).
Lastly and notably, disputed “transmitting” step in claim 1 contains a
conditional limitation. For example, claim 1 recites “transmitting the
electronic customs manifest when it is determined that the international
mailpiece may not leave the originating country.” Appeal Br. 40 (Claims
App.) (emphasis added). This limitation is similar to that discussed in Ex
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parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *5, 7 (PTAB
Apr. 28, 2016) (precedential) (holding that, in a method claim, a step reciting
a condition precedent does not need to be performed by the prior art if the
condition precedent is not met). See also MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev. 08.2017,
Jan. 2018) (citing Ex parte Schulhauser). Thus, when construing method
claim 1 in its broadest, reasonable context, the condition precedent of
“transmitting the electronic customs manifest to a reading device” step need
not be performed when the reading device determines the international
mailpiece may leave the originating country.5 However, because the
rejection as presented determined the condition precedent in the
“transmitting” step had been met (Final Act. 23–24), we similarly presumed
the condition precedent was met when deciding whether Napier would have
taught or suggested the disputed “transmitting” step.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 54 and 59,
which recite commensurate limitations, and (3) the dependent claims for
similar reasons.
DECISION SUMMARY

In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basi
s
Affirmed Reversed

5 This holding does not apply to independent claims 54 or claim 59, which
unlike method claim 1, require structure for performing the function should
the condition occur. See Schulhauser, 2016 WL 6277792, at *7.

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1, 2, 5–10,
54, 55, 58–65
101 Patent Eligibility 1, 2, 5–10,
54, 55, 58–65

1, 2, 5–10,
54, 55, 58–65
103 Lin, Fang, Napier,
Segal
1, 2, 5–10,
54, 55,
58–65
Overall
Outcome
1, 2, 5–10,
54, 55, 58–65

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED