Rachel Marie. Kumar

Patent Trials and Appeals Board

Sep 30, 2019

14094441 - (D) (P.T.A.B. Sep. 30, 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.
14/094,441 12/02/2013 Rachel Marie Kumar 2043.379US2 8028
49845 7590 09/30/2019
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHEN, GEORGE YUNG CHIEH
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte RACHEL MARIE KUMAR
________________

Appeal 2018-009210
Application 14/094,4411
Technology Center 3600
________________

Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to providing a seller in a network-based
shopping system with shipping data that preserves private information
associated with a buyer. Spec. ¶ 2. Claim 1 is illustrative of the invention
and is reproduced below with emphases discussed infra in § I.C.1.:
1. A method, including:
extracting, by a processor of a server, shipping data and a
shipping preference including a shipping service provider
preference from a user record maintained in a database of the
server for a first party;

1 According to Appellant, eBay Inc. is the real party in interest. Br. 2.
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encoding, by the server, the shipping data associated with
the first party to create an encoded identifier, the shipping data
being associated with a transaction between the first party and a
second party;
generating, by the server, an encoded shipping label using
the encoded identifier;
providing, by the server, the encoded shipping label and
the extracted shipping service provider preference to the second
party, the encoded shipping label, when decoded, providing the
shipping data of the first party;
processing a login, via a web client, from a shipping
service provider corresponding to the extracted shipping service
provider preference; and
in response to the login via the web client, processing a
request from the shipping service provider to decode the encoded
shipping label.

App. Br. 20 (Claims Appendix) (emphases added).

REJECTION AT ISSUE
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2–4.
Claims 1–20 stand rejected under a non-statutory obviousness-type
double patenting rejection over the combination of claims 1–15 of Kumar
(US 8,600,902 B2; filed Dec. 20, 2006) and Bansal (US 7,254,549 B1; filed
July 23, 2001). Final Act. 4–6.
ANALYSIS
I. Claims 1–20 Rejected Under 35 U.S.C. § 101
A. Legal Principles
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
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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. 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 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.
(15 How.) 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
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“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 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
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. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity 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 are 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 Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite gathering
information, generating an identifier, generating and providing a shipping
label. Final Act. 2. The Examiner also determines the present claims do not
amount to significantly more than an abstract idea itself because the
Examiner determines the abstract idea is implemented on generic
components that are previously known to the industry, well-understood,
routine, and conventional. Ans. 3, 5, 6, 8 (citing Spec. ¶¶ 38–39).
Appellant argues that label generation cannot be abstract because a
physical object is created. Br. 8–9. Appellant argues that, similar to the
patent eligible claims of Research Corp. Techologies, Inc. v. Microsoft
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Corp., 627 F.3d 859 (Fed. Cir. 2010), the present claims are encoding data.
Br. 15. Appellant further argues, similar to DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the present claims are
necessarily rooted in computer technology to solve problems specifically
arising in the realm of computer networks such as protecting personal data
involving networked-based transactions. Br. 12–14.
Appellant argues, similar to BASCOM Global Internet Services, Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims
recite a combination of non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept. Br.
17–18.2 We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We are aware of no controlling authority that requires the
Examiner to provide factual evidence under step one of the Alice framework
to support a determination that a claim is directed to an abstract idea.
The emphasized portions of claim 1,3 reproduced above (see supra at
1–2), recite commercial transactions including business relations because the

2 Appellant’s argument pertaining to Return Mail, Inc. v. United States
Postal Service, 868 F.3d 1350 (Fed. Cir. 2017) is moot because we do not
rely on this case to reach our Decision.
3 Claim 1, reproduced above with emphasis, recites similar features as
independent claims 9 and 16. Appellant does not argue claims 2–20
separately. Br. 7–14. We, therefore, group claims 1–20 together and refer
to claims 1–20 as the “present claims.”
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claims protect the personal information of one of the parties involved in the
business transaction by encoding shipping data on a shipping label.
According to the Memorandum, commercial transactions including business
relations fall into the category of certain methods of organizing human
activity. See Memorandum. Moreover, those certain methods of organizing
human activity are a type of an abstract idea. See id.4
We, therefore, disagree with Appellant’s argument that label
generation cannot be abstract because a physical object is created (Br. 8–9)
for at least the reasons discussed above.
Because the present claims recite commercial transactions including
business relations that fall into the category of certain methods of organizing
human activity (i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea.
Unlike the claims of Research Corporation Technologies, the present
claims are not directed to applying a blue noise mask to an image. Research
Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d at 863.
In addition, we disagree with Appellant’s argument that, similar to
DDR, the present claims are necessarily rooted in computer technology to

4 Additionally, the extracting, generating, and encoding steps of the claim 1
reproduced above (see supra at 1–2), recite concepts performed in the
human mind because they can be performed using pen and paper.
According to the Memorandum, concepts performed in the human mind fall
into the category of mental processes. See Memorandum. Moreover, those
mental processes are a type of an abstract idea. See id.
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solve problems specifically arising in the realm of computer networks such
as protecting personal data involving networked-based transactions. Br. 12–
14. Instead, the present claims are directed to an abstract idea using
additional generic elements as tools to implement the abstract idea as
discussed supra in § I.C.1. or at best, the present claims are rooted in
commercial transactions technologies including business relations
technologies and overcoming a problem arising in those areas.
The Specification indicates the additional elements (i.e., “processor,”
“database,” “server,” “web client,” “memory,”5 and “hardware processor”6)
recited in the present claims are merely tools used to implement the abstract
idea. Spec. ¶¶ 13–15, 31, 35, 41, 49–50.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (citations omitted).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.

5 Claim 9 recites this feature, whereas claims 1 and 16 does not.
6 Claim 9 recites “hardware processor,” whereas claims 1 and 16 recite
“processor” by itself.
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3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Ans. 3, 5, 6, 8 (citing Spec. ¶¶ 38–39). The Specification
supports the Examiner’s determination in this regard because it explains that
“processor,” “database,” “server,” “web client,” “memory,” and “hardware
processor” are generic components. Spec. ¶¶ 13–15, 31, 35, 41, 49–50.
Appellant’s Specification indicates these elements were well-understood,
routine, and conventional components because it describes them at a high
level of generality and in a manner that indicates that they are sufficiently
well-known. Id.; USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 9, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
We disagree with Appellant’s argument that, like BASCOM, the
present claims recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept. Br. 17–18. Instead, the present claims are directed to an abstract
idea using generic components as discussed supra, in §§ I.C.1. and I.C.2. or
at best, improving an abstract idea—not an inventive concept.
Appellant does not argue claims 2–20 separately, but assert the § 101
rejection of those claims should be withdrawn for at least the same reasons
as argued for independent claim 1. Br. 7–14. Based on our review of the
dependent claims, these claims do not recite any additional features that
would transform the abstract idea embodied in claims 1, 9, and 16 into an
inventive concept. Dependent claims that merely narrow an abstract idea
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“add nothing outside the abstract realm.” SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1169 (Fed. Cir. 2018). Accordingly, we sustain the
Examiner’s rejection of: (1) independent claims 1, 9, and 16; and
(2) dependent claims 2–8, 10–15, and 17–20 under 35 U.S.C. § 101.

II. Claims 1–20 Rejected Under a Non-Statutory Obviousness-Type
Double Patenting Rejection
The Examiner rejects claims 1–20 under the judicially-created
doctrine of non-statutory obviousness-type double patenting over the
combination of Kumar and Bansal. Final Act. 4–6.
Appellant does not proffer any arguments. We, therefore, summarily
sustain the Examiner’s rejection of claims 1–20. See 37 C.F.R.
§ 41.39(a)(1).
We have only considered those arguments that Appellant actually
raised in the Brief. Arguments Appellant could have made, but chose not to
make, in the Brief has not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.
We summarily affirm the Examiner’s decision rejecting claims 1–20
under a non-statutory obviousness-type double patenting rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED