McLaughlin, Michael et al.

Patent Trials and Appeals Board

Aug 5, 2020

13631456 - (D) (P.T.A.B. Aug. 5, 2020)

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.
13/631,456 09/28/2012 Michael McLaughlin 2501-P002X1 2495
68803 7590 08/05/2020
TI Law Group, PC
1055 E Brokaw Road
Suite 30-355
San Jose, CA 95131-2116
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/05/2020 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):
TILGDocket@yahoo.com
aspence@tipatents.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL McLAUGHLIN and BRIAN COLODNY

Appeal 2019-002313
Application 13/631,456
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Chargerback, Inc. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A system for monitoring lost items, the system
comprising:
a database configured to store lost item information and
establishment information, the lost item information pertaining
to lost items that have been recovered at one or more
establishments, the establishment information associated with
the one or more establishments;
a network interface configured to couple with a network;
and
a computing device operatively connected to the database
and the network interface, the computing device having a
processor operable to:
receive lost item information for a given lost item that
has been lost by a current or prior patron customer of an
establishment, the lost item information including a selected
establishment and at least lost location data associated with the
selected establishment where the given lost item was lost;
enter a lost item record for the given lost item into the
database, the lost item record includes the lost item information
for the given lost item;
initiate, via the network interface, transmission of a lost
item notification to the establishment, the lost item notification
including a plurality of selectable interest indicators to
determine if the establishment is willing to participate in
recovery of the given lost item;
receive a reply in response to the lost item notification,
the reply received including at least a selection of the selectable
interest indicators;
determine from the reply whether the establishment is
willing to participate in recovery of the given lost item based on
the selected selectable interest indicator;
transmit a recovery inquiry when it is determined that the
establishment is willing to participate in recovery of the given
lost item based on the reply;
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receive an indication from the establishment as to
whether the given lost item has been found by the establishment
where the given lost item was lost; and
initiate transmission of an electronic recovery
notification to the current or prior patron when the given lost
item of the current or prior patron has been found in the
database.
REJECTION
Claims 1–25 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
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evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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 exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
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constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited; Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
As to Step 1 of the 2019 Revised Guidance, the Examiner does not
determine that the claims in the Appeal are beyond the categories of
statutory subject matter in § 101.
However, with regard to the inquiries corresponding to Step 2A,
Prong One, in regard to independent claim 1, as exemplary, the Examiner
focuses on the following claim limitations:
“receive lost item information for a given lost item . . . ,” “enter
a lost item record for the given lost item into the database . . . ,”
“initiate . . . transmission of a lost item notification to the
establishment. . . ,” “receive a reply in response to the lost item
notification . . . ,” “determine from the reply whether the
establishment is willing to participate . . . ,” “transmit a
recovery inquiry when it is determined that the establishment is
willing to participate in recovery of the given lost item based on
the reply,” “receive an indication from the establishment as to
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whether the given lost item has been found . . . ,” and “initiate
transmission of an electronic recovery notification to the current
or prior patron.”
Final Action 2–3. According to the Examiner, these limitations “describe a
method for processing information through a central clearinghouse, which
the Federal Circuit previously characterized as abstract.” Id. at 3 (citing
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)).
Viewed through the prism of the 2019 Revised Guidance, the
Examiner’s position categorizes the identified claim limitations as reciting a
judicial exception — specifically, a mental-process abstract idea. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (steps that “can be performed in the human mind, or by a human using
a pen and paper” constitute “unpatentable mental processes”). The Federal
Circuit explained that the so-called clearinghouse process described in
Dealertrack amounted to receiving data from one source, “selectively
forwarding” the data, and forwarding reply data to the first source.
Dealertrack, 674 F.3d at 1333. The Federal Circuit has regarded such steps
of comparing and matching (or distinguishing) items to embody mental
processes that are not eligible for patenting. See In re Rudy, 956 F.3d 1379,
1384 (Fed. Cir. 2020) (comparing features, of a body of water, to
descriptions in a chart for identifying a corresponding fish hook color,
constitutes a mental process); In re BRCA1- and BRCA2-Based Hereditary
Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (comparing
one sequence of nucleotides to another, and identifying differences between
them, constitutes a mental process) (citation omitted); PerkinElmer, Inc. v.
Intema Ltd., 496 F. App’x 65, 70 (Fed. Cir. 2012) (nonprecedential) (“The
claims . . . recite the mental process of comparing data to determine a risk
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level: data are gathered in the first trimester of pregnancy; data are gathered
in the second trimester of pregnancy; those data are compared to known
statistical information.”) Indeed, the Federal Circuit, in Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015),
described the Dealertrack claims as employing a “mental process.” Similar
comparing and matching (or distinguishing) features occur in the
corresponding claim limitations that the Examiner identifies in claim 1.
Final Action 2–3; Answer 4–5.
The Appellant disputes the Examiner’s determination that the
identified claim limitations describe an abstract idea, stating: “The claimed
limitations of the claims on appeal are nothing like the long prevalent and
fundamental practices” at issue in Alice and Bilski v. Kappos, 561 U.S. 593
(2010). Appeal Br. 8–9. Further, the Appellant contends that “the clams are
not directed to a mathematical concepts/algorithms, certain methods of
organizing human activity, or mental processes.” Reply Br. 3. Regarding
the Examiner’s reference to Dealertrack, the Appellant states: “Nowhere in
the claims is a central clearinghouse recited and, as such, there is no
reasonable basis to think or conclude that the claims are ‘directed to’ a
clearinghouse or processing information therethrough.” Id. at 1. Yet, the
Appellant does not address the comparison and matching activities central to
the Examiner’s reliance on Dealertrack, which the Examiner regards as
embodying a mental process. See Final Action 2–3, 6–7; Answer 4–5.
Therefore, we are not persuaded of error in the Examiner’s analyses
corresponding to Step 2A, Prong One, of the 2019 Revised Guidance, as to
independent claims 1, 10, and 23.
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Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
The Appellant argues that the “[t]he claimed solution is rooted in
computer technology in order to overcome the conventional difficulties
associated with lost and found items,” in the manner of DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 9–10. Yet,
unlike the claims in DDR, the claims in the Appeal do not “override” an
obstacle caused by the computer network technology itself. DDR, 773 F.3d
at 1258. Rather, the present claims are more akin to those distinguished in
DDR, which use the computer network merely as a tool for carrying out a
particular practice. Id. at 1257. As the Examiner points out: “The
applicant’s invention does not address a specific problem unique to the
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Internet, but instead, only involve[s] transmitting data/messages between a
patron and an establishment using the Internet.” Final Action 9. See also
Answer 8–9. Indeed, “the Alice inquiry . . . asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
The Appellant also contends that the claims in the Appeal effect a
technological improvement. Appeal Br. 10, 12–15; Reply Br. 6. Yet, the
Appellant does not identify the nature of the alleged improvement or its
basis in any “additional elements” of the claims. As the Examiner states:
“the [A]ppellant’s [S]pecification and brief fail to teach how the operative
steps recited in the claims actually improve the functioning of a computer, a
technical process, or any other technology.” Answer 8–9. Furthermore,
insofar as the Appellant contends that an improvement is accomplished by
the claim limitations identified on pages 13–14 of the Appeal Brief — i.e.,
the entirety of claim 1, except for the preamble and computer hardware
limitations (“database,” “network interface,” and “computing device) — this
claim language encompasses limitations that the Examiner identifies as
reciting a judicial exception (see Final Action 2–3). Thus, the Appellant
does not identify any “additional elements” that might potentially integrate
the identified judicial exception into a practical application, per Step 2A,
Prong Two, of the 2019 Revised Guidance.
The Appellant also argues that “the Examiner has failed to adequately
consider the relevance of preemption.” Appeal Br. 11. However, “[w]hile
preemption may signal patent ineligible subject matter, the absence of
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complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
See also Answer 10–11.
Therefore, we are not persuaded of error in the rejection, with regard
to analyses corresponding to Step 2A, Prong Two.
Proceeding to Step 2B of the 2019 Revised Guidance (84 Fed. Reg. at
56), a claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
The Appellant argues that independent claims 1, 10, and 23 recite
“sufficient structure” to avoid being “drawn to patent ineligible subject
matter,” because they recite, e.g., for claim 1, “a database, a network
interface and a computing device.” Appeal Br. 10–11. Yet, the Appellant
does not explain why these elements might operate in something other than a
well-understood, routine, conventional manner, let alone why they might
amount to “significantly more” than the identified judicial exception. To the
contrary, the Examiner points out that these hardware elements identified by
the Appellant are described in the Specification as being generic in their
structure and operation. Answer 6–7 (citing Spec. ¶¶ 30, 33, 141).
The Appellant also broadly paraphrases the claim language, in
arguing:
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[T]he claims on appeal contain numerous claim limitations that
address details such as receipt of information, entry of [sic] lost
item record into a database, facilitate transmission of lost item
notifications to pertinent establishment, receive replies to lost
item notifications, store lost item information and establishment
information in [sic] database, receive found item information,
and facilitate transmission of electronic recovery notification to
[sic] patron, which are clearly more than an abstract idea.
Appeal Br. 8. As an initial matter, the paraphrased claim language
substantially overlaps with claim limitations that the Examiner identifies as
reciting a judicial exception (see Final Action 2–3), such that the Appellant
does not identify “additional limitations,” per the Alice analysis. Moreover,
the Appellant provides no indication that these claim features operate in
anything other than a well-understood, routine, conventional manner;
therefore, these claim features cannot amount to “significantly more” than
the identified judicial exception. Indeed, the only feature identified by the
Appellant (Appeal Br. 8) that does not mirror a claim limitation that the
Examiner regards as part of the judicial exception (Final Action 2–3) is the
Appellant’s reference to storing lost item information and establishment
information in a database. The Federal Circuit has stated that storing
information is among the basic computer functions that are “well-
understood, routine, conventional activities previously known to the
industry” that cannot render a claim patent-eligible. Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015).
The Appellant also contends that the dependent claims recite
“additional limitations that further ensure patent eligibility.” Appeal Br. 15.
Although the Appellant identifies claim language in the dependent claims
(id. at 15–16), the Appellant provides no reasoning or explanation to indicate
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that any of this language might constitute “significantly more” than a
judicial exception. “A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” 37 C.F.R. § 41.37(c)(1)(iv).
In view of the foregoing, we are not persuaded of error in in the
Examiner’s analyses corresponding to Step 2B of the 2019 Revised
Guidance, such that we sustain the rejection of independent claims 1, 10, and
23, and dependent claims 2–9, 11–22, 24, and 25, under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–25 101 Eligibility 1–25

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