Thomas E. Santarlas

Patent Trials and Appeals Board

Aug 9, 2019

14464544 - (D) (P.T.A.B. Aug. 9, 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.
14/464,544 08/20/2014 Thomas E. Santarlas 5500028.00011 4731
106716 7590 08/09/2019
Michael J. Colitz, III
GrayRobinson, P.A.
401 E. Jackson Street, Suite 2700
Tampa, FL 33601
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/09/2019 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):
PTOTPA@gray-robinson.com
lynnette.dewitz@gray-robinson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________c___

Ex parte THOMAS E. SANTARLAS
____________

Appeal 2017-010021
Application 14/464,544
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY,
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1–9.1 We have jurisdiction under 35
U.S.C. § 6(b). Appellants appeared for oral hearing on July 26, 2019.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
The Appellant claims a system and method for automated handling of
documents related to private investigations. (Spec. ¶ 2, Title).
Claim 1 is representative of the subject matter on appeal.

1 Appellant identifies Santarlas Global, LLC as the real party in interest.
Appeal Brief 3.
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1. A method for managing, distributing, and serving court-
related documents, the method being carried out by a number of
different entities, including subscriber companies (SC), law service
providers (LSP), and process servers (PS), with the entities
communicating over a network including a server and a GPS enabled
device, the method comprising the following steps:
the SC receiving a job request, job details, and court-related
documents from an LSP;
the SC either accepting or declining the job request based upon the
job details and the court-related documents;
the SC notifying the LSP whether the SC has declined or accepted
the job request;
the SC assigning an accepted job request to a particular PS and
delivering the job request, job details, and the court-related documents
to the assigned PS, the job details including a geographic location
where the court-related documents are to be served;
the PS retrieving the service copies of the court-related documents
from the SC over the network;
the PS traveling to the geographic location, with the geographic
location being confirmed and recorded by the GPS enabled device;
the PS attempting service of the court-related documents and
recoding whether the service of the court-related documents was
successful or unsuccessful;
the GPS enabled device generating a data file including whether
the service of the court-related documents was successful or
unsuccessful and the geographic location, if service is successful, the
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data file also including the electronic signature of the PS as evidence of
service;
sending the data file to the server, with the server being accessed
remotely by the SC and LSP.

THE REJECTION
Claims 1–9 are rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more.
Claims 1–9 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Woodings et al. (US 2010/0211515; pub. August 19,
2010) in view of Rosenthal et al. (US 2007/0112584 pub. May 17, 2007).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–9 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an
element or combination of elements that is
“sufficient to ensure that the patent in practice
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amounts to significantly more than a patent upon
the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to concepts
relating to the economy and commerce such as agreements between people
in the form of contracts, legal obligations, and business relations and is
therefore both a fundamental economic practice and a method of organizing
human activity. (Final Act. 3–4) The Examiner finds that the structural
elements e.g. computer network, server, GPS enabled device, and electronic
signatures together do not amount to significantly more than the abstract
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idea because the claims do not recite an improvement to a technology or
technical field or improvement to the functioning of any computer itself.
(Final Act. 4). The Examiner notes that the claimed GPS enabled device is
recited at a high-level of generality and its broadest reasonable interpretation
comprises only a processor, memory and transmitter that simply perform
generic computer functions of receiving, processing and transmitting
information.
The Specification discloses that the claims are directed to a system for
electronically distributing, managing and serving documents such as
summonses, complaints, subpoenas etc. (Spec. ¶ 2–3). The Specification
discloses that in the past, service of documents required finding a person to
serve the documents and having that person correspond with the clerk of
court to obtain certified documents to serve often times via local counsel.
These steps have remained unchanged despite recent advances in computer
technology and electronic communications. The system and method of the
present invention is operated by a host and utilized by a number of different
entities that are involved in effecting service of court-related documents.
(Spec. ¶ 22). These entities include law service providers which may include
attorneys, law firms, paralegals, legal secretaries and/or any other
individuals or entities that generate, or assist in creating court-related
documents. Other entities that utilize the system include clerks of the court
which includes any government-authorized individuals or entities that are
involved in certifying court-related documents or in issuing summonses, or
other related documents. (Spec. ¶ 23). These disclosures support the
Examiner’s determination that the claims are directed to a method of
organizing human activity which includes fundamental economic practices
because the invention is directed to a method of organizing the interactions
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between the legal profession and others needed to serve documents and
because the claims relate to the legal interactions. Guidance 52.
The claims recite the steps performed by subscriber companies
(“SC”), law service providers (“LSP”) and process servers (“PS”). The steps
of claim 1 include the SC “receiving job request,” “accepting or declining
the job request,” “notifying the LSP,” and “assigning an accepted job request
to a particular PS.” Claim 1 also includes the steps performed by the PS of
“retrieving the service copies,” “traveling to the geographic location,” and
“attempting service.” As such, claim 1 also recites various steps that detail
the interactions between various parties and as such is consistent with the
determination that the claims are directed to a certain method of organizing
human activity.
In addition, as the Specification discloses steps taken to serve legal
documents and claim 1 recites steps for “distributing, and serving court-
related documents,” the Specification and the claims are directed to legal
interactions and therefore are directed to a certain method of organizing
human activity on that basis as well. Guidance at 52.
We thus agree with the Examiner’s findings that the claims recite a
certain method of organizing human activity
Also, we find the steps of claim 1 constitute “analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). In this regard, the
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Specification discloses that the system of the invention can also be carried
out manually without the requirement of a computer network. (Spec. ¶48).
Turning to the second prong of the “directed to test,” claim 1 merely
requires a network including a server and a GPS enabled device. The
recitation of the words “server” and “GPS enabled device” does not impose
“a meaningful limit on the judicial exception, such that the claim is more
than a drafting effort designed to monopolize the judicial exception.”
Guidance at 53. In this regard, the recitation does not affect an improvement
in the functioning of the server or GPS enabled device or other technology,
does not recite a particular machine or manufacture that is integral to the
claims, and does not transform or reduce a particular article to a different
state or thing. Id. In addition, the Specification does not disclose that the
network is an improved network. Claim 1 recites a judicial exception that is
not integrated into a practical application and thus claim 1 is directed to an
“abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to an abstract idea, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 218 (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
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“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
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.”
Alice, 573 U.S. at 222 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer components at each step of the process is purely conventional.
Using a computer to retrieve, select, and apply decision criteria to data and
modify the data as a result amounts to electronic data query and retrieval—
one of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
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by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the network or the GPS enabled device. As we stated above, the claims do
not affect an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ¶¶ 25, 57). Thus, the
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claims at issue amount to nothing significantly more than instructions to
apply the abstract idea of information access using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 13–26; Reply Br. 3–
10) the Appellant has submitted concerning the patent eligibility of the
claims before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner’s analysis fails to consider the steps
recited in claim 1 of delivering job details, traveling to the location, and
generating a data file by the GPS device. The Appellant argues that these
steps are unconventional steps far removed from a mere abstract idea and in
regard to the GPS device are tied to a dedicated piece of equipment.
(Brief 15–16).
These limitations do not reflect a patent-eligible application of the
patent-ineligible abstract idea. To the contrary, these limitations are recited
at a high-level of generality and comprise routine techniques and post-
solution activity that does not impart a sufficient inventive concept to
claim 1. See Mayo, 566 U.S. at 79 (“well-understood, routine, conventional
activity previously engaged in by scientists who work in the field ... is
normally not sufficient to transform an unpatentable law of nature into a
patent-eligible application of such law.”); see also Parker v. Flook, 437 U.S.
584, 590 (1978) (“The notion that post-solution activity, no matter how
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conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance.”).
We are not persuaded of error on the part of the Examiner by
Appellants argument that the claims recite a GPS enabled device and this is
a dedicated piece of equipment which is a meaningful limitation. We agree
with the Examiner that because the GPS enabled device is used for its
routine and expected functions (i.e. tracking and recording geolocations) the
use of the GPS enabled device does not add an inventive concept. (Ans. 5).
We are not persuaded of error on the part of the Examiner by
Appellants argument that the claims do not preempt the abstract idea
espoused by the Examiner. While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). And, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
The Appellant argues that the claims are directed to a particular
method that is novel and non-obvious. (Brief 17). To the extent the
Appellant maintains that the limitations of claim 1 necessarily amount to
“significantly more” than an abstract idea because the claimed apparatus is
allegedly patentable over the prior art, the Appellant misapprehends the
controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
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an evaluation of novelty or non-obviousness, but rather, a search for “‘an
element or combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.”’ Alice, 573 U.S. at 218. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 89.
The Appellant’s arguments that the claims are analogous to the claims
in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) and Enfish, 822 F.3d 1327, 1337 (Fed. Cir. 2016) are not persuasive
because Appellant does not explain how the claims on appeal are analogous
to the claim in those cases.
We are not persuaded of error on the part of the Examiner by
Appellant’s arguments that the claims do not recite an abstract idea because
the claims include a GPS data file and this is not a longstanding commercial
practice. This argument is not persuasive because the Examiner does not
find that using the GPS data file is a longstanding commercial practice and
part of the abstract idea, but rather the Examiner considered the recitation of
the GPS data when determining whether the claims include significantly
more than the abstract idea and as we discussed above concluded that this
recitation does not amount to significantly more than the abstract idea.
In view of the foregoing, we will affirm this rejection as it is directed
to claim 1. We will also sustain this rejection as it is directed to the
remaining claims subject to this rejection because the Appellant has not
argued the separate eligibility of these claims.

35 U.S.C. § 103(a) REJECTION
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We will not sustain this rejection because we agree with the Appellant
that the prior art does not disclose the process server “traveling to the
geographic location, with the geographic location being confirmed and
recorded by the GPS enabled device” as required by claim 1. The Examiner
relies on paragraphs 44–46 of Wooding for teaching this subject matter. We
find that the relied on portion of Wooding describes service of process and
proof of service of process but does not include a description of a
confirmation of a location by a GPS enabled device.
We will also not sustain this rejection as it is directed to the remaining
claims because each of these claims includes the subject matter we found
missing in Woodings.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting the appealed claims
under 35 U.S.C. § 101.
We conclude that the Examiner did err in rejecting the appealed
claims under 35 U.S.C. § 103(a).

DECISION
The rejection of the Examiner under 35 U.S.C. § 101 is affirmed.
The rejection of the Examiner under 35 U.S.C. § 103(a) is not
affirmed.
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