STREMSDOERFER, Mathieu et al.

Patent Trials and Appeals Board

Feb 26, 2020

13524880 - (D) (P.T.A.B. Feb. 26, 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.
13/524,880 06/15/2012 Mathieu STREMSDOERFER MCG133US 3214
83942 7590 02/26/2020
Levy & Grandinetti
P.O. Box 18385
Washington, DC 20036
EXAMINER
CASEY, ALEXIS M
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
02/26/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATHIEU STREMSDOERFER and PHILIPPE HOFFMANN
________________

Appeal 2019-001715
Application 13/524,880
Technology Center 3600
________________

Before JASON V. MORGAN, HUNG H. BUI, and JOHN F. HORVATH,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 9–20. Appeal Br.2 15. Claim 8
is canceled. Claims App. 2 (Mar. 22, 2018). 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.
2 All references to the Appeal Brief (“Appeal Br.”) are to the original Appeal
Brief filed March 22, 2018.
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Summary of the disclosure
Appellant’s claimed subject matter relates to renting an article by:
(1) receiving requests from potential lessees to rent the article; (2) agreeing
to rent the article to the lessees; (3) transferring sequentially the article
between lessees according to a chronology of requested rental periods; (4)
monitoring the rental and transfers; and (5) distributing payments. Abstract.
Representative claim (key limitations emphasized)
1. A method for renting portable property comprising:
entering into a processor and storage system via an information
network a unique identifier of an article of portable property for
rent;
receiving a plurality of requests via the information network
from potential lessees to rent the article for requested rental
periods;
sorting by the processor and storage system the requests to rent
the article according to a chronology of the requested rental
periods;
qualifying potential lessees based upon criteria predetermined
by the owner of the article, wherein the predetermined criteria
are selected by the owner specific to each article of portable
property for rent;
agreeing via the information network to rent the article to a
plurality of lessees according to the chronology of the requested
rental periods;
transferring possession of the article from a lessor to a first
lessee, the first lessee being first in the chronology of the
sorted, requested rental periods;
transferring sequentially the article between lessees according
to the chronology of the sorted, requested rental periods;
monitoring for the lessor by the processor and storage system
each rental and transfer of the article; and
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distributing by the processor and storage system a payment for
each rental of the article.
The Examiner’s rejections and cited references
The Examiner rejects claims 1–7 and 9–20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2–5.
The Examiner rejects claims 1–6, 12, 14–163, and 18–204 under 35
U.S.C. § 103(a) as being obvious over Snapp et al. (US 2003/0233246 A1;
published Dec. 18, 2003) (“Snapp”) and Meunier (US 2002/0186144 A1;
published Dec. 12, 2002). Final Act. 5–8, 12.
The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
obvious over Snapp, Meunier, and Thibodeau (US 6,671,697 B1; issued
Dec. 30, 2003). Final Act. 9.

3 Although listed in the statement of the rejection, the Examiner does not
provide explicit findings showing in what manner Snapp and Meunier teach
or suggest the recitations of claim 16. Final Act. 5–8. Appellant does not
raise this as an issue, instead arguing claim 16 together with claim 1. Appeal
Br. 28. Accordingly, Appellant’s arguments based on this apparent oversight
are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2017).
4 In rejecting claims 18–20, the Examiner merely finds that the claims
“recite the same or similar limitations as those addressed . . . for claims 1–
17” (Final Act. 12) even though Appellant had canceled claim 8 at the time
of the rejection (Amend. 3 (June 1, 2017)) and even though the Examiner
relies on additional references with respect to claims 7, 9–11, 13, and 17
(Final Act. 9–12). Appellant does not raise any issues based on these aspects
of the rejection, instead arguing claims 18–20 together with claim 1. Appeal
Br. 28. Accordingly, Appellant’s arguments based on these aspects of the
rejection are waived. 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner rejects claims 95, 10, 11, 13, and 17 under 35 U.S.C.
§ 103(a) as obvious over Snapp, Meunier, and Antony et al. (US 7,617,133
B1; issued Nov. 10, 2009) (“Antony”). Final Act. 9–12.
PRINCIPLES OF LAW
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part analysis: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.

5 The Examiner also rejects claim 9 based solely on Snapp and Meunier
(Final Act. 7–8)—mistakenly referring to claim 8 in the statement of the
rejection (id. at 5). The Examiner, however, finds that Snapp does not
explicitly disclose the features of claim 9, and thus also relies on Antony. Id.
at 9–10. Because the Examiner’s rejection based on Snapp, Meunier, and
Antony arguably contradicts the Examiner’s rejection based on Snapp and
Meunier alone (compare id. at 9–10 with id. at 7–8), we will only consider
the Examiner’s rejection based on Snapp, Meunier, and Antony.
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“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016)).
Last year the U.S. Patent and Trademark Office (“USPTO”) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. 52–55.
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:
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(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. 56.
35 U.S.C. 101
Step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that it is “directed to the judicial exception
of shopping and organizing rental agreements and providing product and
offer information which is considered to be an abstract idea inasmuch as
such activity is considered both a fundamental economic practice and a
method of organizing human activity.” Final Act. 3; see also Ans. 4.
Appellant contends the Examiner “improperly concludes under Step
2A of the Mayo framework that the claims are directed to ‘Concepts
identified as abstract.’” Appeal Br. 16. In particular, Appellant argues “the
selected statements that the ‘claims are directed to’ or the paraphrasing of
elements do not comply with the analysis required under the Alice test. The
claims under the test are to be viewed as a whole.” Id. at 18. Appellant
further argues “[t]he technology or technical field of [claim 1] is the field of
leasing personal property.” Id. at 20.
Appellant’s arguments are unpersuasive because the Examiner’s
determinations accord with the recitations of claim 1. In particular, claim 1
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recites: (1) “receiving a plurality of requests . . . from potential lessees to
rent the article for requested rental periods”; (2) “qualifying potential lessees
based upon criteria predetermined by the owner of the article”; (3) “agreeing
. . . to rent the article to a plurality of lessees according to the chronology of
the requested rental periods”; (4) “transferring possession of the article from
a lessor to a first lessee”; (5) “transferring sequentially the article between
lessees according to the chronology of the sorted, requested rental periods”;
(6) “monitoring . . . each rental and transfer of the article”; and (7)
“distributing . . . a payment for each rental of the article.” Thus, claim 1
recites steps taken to organize transfers of an article for rent—first from a
lessor to a lessee and then among a sequence of lessees—according to
agreements to rent the article for consideration.
These steps represent certain methods of organizing human activity in
the form of commercial or legal interactions, and therefore claim 1 recites an
abstract idea. Revised Guidance, 84 Fed. Reg. 52. Moreover, Appellant’s
argument that the field of claim 1 “is the field of leasing personal property”
(Appeal Br. 20) supports, rather than shows error in, the Examiner’s
determination (Ans. 4).
Step 2A, prong two
As part of the process for organizing transfers of an article for rent,
claim 1 further recites the use of a processor and storage system and an
information network as part of several of the steps discussed above. The
process’s use of these elements further includes both “entering into a
processor and storage system via an information network a unique identifier
of an article of portable property for rent” and “sorting by the processor and
storage system the requests to rent the article according to a chronology of
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the requested rental periods.” The claimed use of a processor, storage
system, and information network merely use the recited technologies as
“tool[s] to perform [the] abstract idea.” Revised Guidance, 84 Fed. Reg. 55.
Appellant argues claim 1 recites “very specific instructions or rules,
which provide a secure method for transferring personal property between
and among multiple lessees without the personal property having to be
returned to lessors or their agents at the termination of each leasing period.”
Appeal Br. 21. Appellant’s argument is unpersuasive because claim 1 does
not have limited rules structured to reflect a specific implementation that
differs from what a human would have used in organizing transfers of an
article for rent. See McRO, 837 F.3d at 1316 (citing Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 595–96 (2013)). The most
specific rule that exists in claim 1 relates to sorting requests to rent an article
for requested rental periods such that the article can be transferred
sequentially according to the chronology of the sorted, requested rental
periods. Such sorting, however, would have been expected for such transfers
so that as many potential lessees as possible could have access to the article
when needed, rather than before or after the article is needed (when the
article may be needed by another lessee). Moreover, transferring the article
between lessees rather than from lessee to lessor and then back to another
lessee merely represents part of the recited certain methods of organizing
human activity rather than an additional element. Revised Guidance, 84 Fed.
Reg. 54–55.
For these reasons, claim 1 does not include recitations that integrate
the recited certain methods of organizing human activity (commercial or
legal interactions) into a patent-eligible practical application.
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Step 2B
The Examiner determines that claim 1 does “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception” (Final Act. 3) because the technological elements of claim 1
“each execute in a manner routinely and conventionally expected of these
elements” (id.) and because, even when taken in combination, the
technological elements of claim 1 “do not offer substantially more than the
sum of the functions of the elements when each is taken alone” (id. at 4).
Appellant contends the Examiner erred because claim 1 recites “specific
components, required by the claimed process, and [a] claimed specified
manner in which the property is required to be transferred between
sequential lessees [thus] prevent[ing] preemption of all relationships
between a lessor and lessees.” Appeal Br. 25.
We first note that if a claim proves to be unpatentable as a result of
the two-part analysis (i.e., steps 2A (prongs one and two) and 2B), no
additional determination regarding preemption is necessary. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility,” as “questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(internal quotation marks and citation omitted).
Furthermore, we disagree with Appellant that claim 1 “recites a
method for renting portable property that is limited in its scope to the use of
specific indicia or devices.” Appeal Br. 25. The claimed transfer or use of
portable property, even if identified uniquely with a device such as an RFID
chip, a processor, storage system, and information network all represent
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well-understood, routine, and conventional activities specified at a high level
of generality. Revised Guidance, 84 Fed. Reg. 56. This is evident in the
Specification, which discusses prior art management of equipment tagged
with RFIDs (Spec. 2) and a number of other examples of identifiers
including barcodes and serial numbers (id. at 10). The Specification further
discloses that the system performing the claimed process “is readily operated
or supported by an online Internet processor, such as a computer or
‘smartphone’” (id. at 6), that the system can include “a digital memory
device in at least one computer, a series of electronic devices, or [a] similar
device” (id. at 7–8), and that “storage can be as simple as an electronic
device that wirelessly connects to the Internet or [a] comparable source of
data and information” (id. at 8). Thus, contrary to Appellant’s arguments, the
Specification discloses generic (i.e., not specific) indicia and devices.
Moreover, we are unable to ascertain any inventive concept that arises
out of the recitations of claim 1, when read as an ordered combination, that
transforms the underlying abstract idea into a patent-eligible invention. See
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1349 (Fed. Cir. 2016). Thus, the evidence of record supports, and we agree
with, the Examiner’s determination that claim 1 does not have additional
recitations that add significantly more to the underlying certain methods of
organizing human activity. Final Act. 3–4; Ans. 4–6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and of claims 2–7 and 9–20, which Appellant does not argue
separately. Appeal Br. 16–25.
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35 U.S.C. § 103(A)
In rejecting claim 1 as obvious, the Examiner finds that Snapp’s
transfer of an item from a bailee to a buyer, combined with Snapp’s
disclosure related to a leasing as an alternative to selling, teaches or suggests
“transferring sequentially the article between lessees according to the
chronology of the sorted, requested rental periods.” See Final Act. 6 (citing
Snapp ¶¶ 32, 69); Ans. 6.
Appellant contends the Examiner erred because the use of a bailee
means that “[t]he item in Snapp is not transferred from a lessee sequentially
to the next lessee.” Appeal Br. 27. Appellant further argues that Meunier,
Thibodeau, and Antony also do not teach or suggest transferring an article
from one lessee to another without going through a third party. Id. at 27–30.
Thus, Appellant argues “[a]ny combination of the cited references teaches
away from the [claimed] sequential transfer from one lessee to the next
lessee.” Id. at 30.
Appellant’s arguments are unpersuasive because, as the Examiner
correctly finds, Snapp teaches transferring an article from one lessee to
another, even if a third party (e.g., a bailee) is used in carrying out the
transfer. See Ans. 6–7. Claim 1 does not include any negative recitations that
preclude the use of a third party in such manner. Moreover, the Specification
explicitly discloses that although a transfer can be done through an in-person
meeting, an alternative is for a “temporary provider [to] ship the article”—an
alternative that “is particularly desirable for low value items.” Spec. 15.
Therefore, the broadest reasonable interpretation of the disputed recitation,
when read in light of the Specification, encompasses the use of a third party
to transfer an article from one lessee to another lessee.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and the Examiner’s 35 U.S.C. § 103(a) rejections of claims 2–7
and 9–20, which Appellant argues are patentable for similar reasons. See
Appeal Br. 26–30.
CONCLUSION
Claims
Rejected 35 U.S.C. §
References/
Basis Affirmed Reversed
1–7, 9–20 101 Eligibility 1–7, 9–20
1–6, 12,
14–16, 18–20
103(a) Snapp, Meunier 1–6, 12,
14–16, 18–20

7 103(a) Snapp, Meunier,
Thibodeau
7
9–11, 13, 17 103(a) Snapp, Meunier,
Antony
9–11, 13, 17
Overall
Outcome
1–7, 9–20
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