Whitehouse, Harry T.

Patent Trials and Appeals Board

May 14, 2020

12842695 - (D) (P.T.A.B. May. 14, 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.
12/842,695 07/23/2010 Harry T. Whitehouse 080839-0385174 4575
909 7590 05/14/2020
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/14/2020 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARRY T. WHITEHOUSE
____________

Appeal 2019-001149
Application 12/842,695
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–30. An oral hearing in this appeal was held
April 22, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 11, 2018) and Reply Brief (“Reply Br.,” filed November 21,
2018), and the Examiner’s Answer (“Ans.,” mailed September 21, 2018),
and Final Office Action (“Final Act.,” mailed January 12, 2018). Appellant
identifies PSI Systems, Inc. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
Appellant’s claimed invention “pertains to postage indicia, postage
payment and in particular to a system and method for processing a mailing
postage label” (Spec. ¶ 2).
Claims 1, 14, and 17 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of processing a mailing label through a
postal service that requires an account that can be charged for
generating the mailing label, comprising:
[(a)] charging or deducting, by a vendor computer
system associated with a postage vendor, an amount of a postage
indicium from a fictitiously fundable or fictitiously chargeable
account associated with a user to enable a user computer system
associated with the user to generate a mailing label with the
postage indicium for a mail piece or package without the user
incurring a cost for the postage indicium at least until one or more
triggering rules are satisfied,
wherein the one or more triggering rules comprises
the vendor computer system’s receipt of information
associated with the mail piece or package from a carrier
computer system associated with a postal carrier, the
information indicating that the mail piece or package is
inducted in the mail stream or is in transit in the mail
stream,
wherein the mailing label includes a tracking
indicium associated with the fictitiously fundable or
fictitiously chargeable account,
wherein the fictitiously fundable or fictitiously
chargeable account of the user is fundable or chargeable
with faux money that does not have any real monetary
value, and
wherein the user computer system is configured to
communicate with the vendor computer system via the
Internet;
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[(b)] receiving, by the vendor computer system, tracking
information associated with the mail piece or package from the
carrier computer system, the tracking information being obtained
by the carrier computer system via a scanning device’s scan of
the tracking indicium on the mailing label on the mail piece or
package when the mail piece or package is inducted in the mail
stream or during transit of the mail piece or package in the mail
stream, the scanning device being configured to communicate
the tracking information to the carrier computer system;
[(c)] storing, in a database associated with the vendor
computer system, the tracking information and a transaction
indicium including the amount of the postage indicium; and
[(d)] charging or deducting, by the vendor computer
system, funds corresponding to the amount of the postage
indicium charged or deducted from the fictitiously fundable or
fictitiously chargeable account from an actually fundable or
actually chargeable account associated with the user based on the
tracking information.
REJECTION
Claims 1–30 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 6–19).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., 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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to
processing a mailing label through a postal service that requires
an account to be charged and therefore charging a fake account
with fake money in order to generate a label, attaching it to a mail
piece and charging [a] real account based on the mail piece with
the fake money charged to the fake account generated label[,]
i.e., to a method of organizing human activity and an idea of itself of
“charging, first a fictitious account, and then a real account, to charge for an
actual use of a postage indicium, without incurring costs for an un-used one”
— a concept that the Examiner concluded is similar to other concepts that
the courts have held abstract (Final Act. 5–7). The Examiner also
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determined that the claims do not recite additional elements or a
combination of elements sufficient to amount to significantly more than the
abstract idea itself (id. at 7–10).
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded, as an initial matter, that the Examiner
overgeneralized the claims to identify an abstract idea, or that the Examiner
otherwise failed to consider the claims as a whole (Appeal Br. 8–11; see also
Reply Br. 8). Instead, Examiner’s characterization of the claims is, in our
view, fully consistent with the Specification, as described below, including
the claim language.
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Appellant charges that the Examiner “improperly ignored and stripped
out a number of requirements of the individual claimed steps” (Appeal
Br. 10–11); but, there is no requirement that an examiner’s formulation of
the abstract idea must copy the claim language. That the claims include
more words than the phrase the Examiner used to articulate the abstract idea,
and that the Examiner, thus, articulates the abstract idea at a higher level of
abstraction than would Appellant is, accordingly, an insufficient basis to
persuasively argue that the claim language has been mischaracterized or that
the Examiner has failed to consider the claims as a whole. Cf. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
We also decline to find error here to the extent Appellant argues that
the § 101 rejection cannot be sustained because the Examiner has not
addressed the patent eligibility of each of the claims separately or otherwise
failed to establish a prima facie case of patent ineligibility (Appeal Br. 8; see
also Reply Br. 8–9). There is no dispute that examiners are to evaluate the
patent eligibility of each claim individually. But, consideration of each
claim individually does not require a separate written analysis for each
individual claim. Moreover, the claims here are all directed to the same
abstract idea, albeit at differing levels of specificity. Cf. Content Extraction
& Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348
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(Fed. Cir. 2014) (explaining that when all claims are directed to the same
abstract idea, “addressing each claim of the asserted patents [is]
unnecessary.”).
We also note for the record that the Federal Circuit has observed
repeatedly that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, “together with such information . . . as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Here, the Examiner set forth the statutory basis of
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of 35 U.S.C. § 132. And we find that, in doing so,
the Examiner established a prima facie case of patent ineligibility.
Appellant’s argument that the Examiner erred in determining that
claim 1 is directed to an abstract idea similarly fails. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
v. Active Network, Inc., 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
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which computers are invoked merely as a tool. See id. at 1335–36. Here, it
is clear from the Specification (including the claim language) that claim 1
focuses on an abstract idea, and not on any improvement to technology
and/or a technical field.
The Specification is titled “SYSTEM AND METHOD FOR
PROCESSING A MAILING LABEL,” and states that the “present invention
pertains to postage indicia, postage payment and in particular, to a system
and method for processing a mailing postage label” (Spec. ¶ 2). In the
Background section, the Specification describes that returned goods
represent a substantial percentage of packages shipped worldwide (id. ¶ 4),
and details various approaches that the U.S. Postal Service (the “USPS”) has
employed in generating and processing merchandise return labels (id. ¶¶ 4–
10). The Specification describes that a prepaid return label printing solution
was introduced, circa 2004, for USPS Priority and Express mail labels (id.
¶ 11). In accordance with this solution, “software logic . . . reverses the
return address and delivery address of what would be [a] normal Priority
Mail label”; adds the legend ‘No Postage Stamp Necessary’”; and removes
the postmark date (id.). A computer image may then be emailed to a
customer or displayed on a website, thereby, providing a “quick and easy
way” for a vendor to supply a prepaid return label to its customer (id. ¶ 12).
The Specification describes that national postal services, like the
USPS, have traditionally operated with a prepaid model (Spec. ¶ 14).
Accordingly, a limitation of this type of return label is that the postage is
prepaid by the postage account holder (id. ¶ 13); therefore, if the label is not
used, the postage is essentially wasted (id.).
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The claimed invention is intended to address this issue by first
charging or deducting a fictitiously fundable or fictitiously chargeable
account to enable a mailing label to be generated, and then charging or
deducting funds from an actually fundable or actually chargeable account
after the mail piece is inducted into the mail stream or during transit of the
mail piece in the mail stream (Spec. ¶ 17). Claim 1, thus, recites a method
for processing a mailing label comprising: (1) charging or deducting the
amount of a postage amount from a fictitiously fundable or fictitiously
chargeable account to enable a mailing label with the postage indicium to be
generated without the user incurring a cost for the postage indicium until
after a triggering event, i.e.,
charging or deducting, by a vendor computer system
associated with a postage vendor, an amount of a postage
indicium from a fictitiously fundable or fictitiously chargeable
account associated with a user to enable a user computer system
associated with the user to generate a mailing label with the
postage indicium for a mail piece or package without the user
incurring a cost for the postage indicium at least until one or more
triggering rules are satisfied,
wherein the one or more triggering rules comprises
the vendor computer system’s receipt of information
associated with the mail piece or package from a carrier
computer system associated with a postal carrier, the
information indicating that the mail piece or package is
inducted in the mail stream or is in transit in the mail
stream,
wherein the mailing label includes a tracking
indicium associated with the fictitiously fundable or
fictitiously chargeable account,
wherein the fictitiously fundable or fictitiously
chargeable account of the user is fundable or chargeable
with faux money that does not have any real monetary
value, and
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wherein the user computer system is configured to
communicate with the vendor computer system via the
Internet
(step (a), as recited in claim 1); (2) receiving and storing tracking
information, when the mail piece is inducted in the mail stream or during
transit of the mail piece in the mail stream, and a transaction indicium
including the amount of the postage indicium, i.e.,
receiving, by the vendor computer system, tracking
information associated with the mail piece or package from the
carrier computer system, the tracking information being obtained
by the carrier computer system via a scanning device’s scan of
the tracking indicium on the mailing label on the mail piece or
package when the mail piece or package is inducted in the mail
stream or during transit of the mail piece or package in the mail
stream, the scanning device being configured to communicate
the tracking information to the carrier computer system; [and]
storing, in a database associated with the vendor computer
system, the tracking information and a transaction indicium
including the amount of the postage indicium
(steps (b) and (c)); and (3) charging or deducting the amount of the postage
indicium from an actually fundable or actually chargeable user account
based on the tracking information, i.e., “charging or deducting, by the
vendor computer system, funds corresponding to the amount of the postage
indicium charged or deducted from the fictitiously fundable or fictitiously
chargeable account from an actually fundable or actually chargeable account
associated with the user based on the tracking information” (step (d)). These
limitations, when given their broadest reasonable interpretation, recite
charging an unfunded user account to enable a user to generate a prepaid
postal mailing label without incurring the postage cost until after a mail
piece bearing the mailing label is processed by the postal service. Simply
put, claim 1 recites a sales transaction, i.e., a commercial interaction, which
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is a method of organizing human activity and, therefore, an abstract idea.
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are a “vendor computer system”; a “database associated with the
vendor computer system”; a “scanning device”; and a “user computer
system” — elements that, as the Examiner observed, are recited at a high
level of generality, i.e., as generic computer components performing generic
computer functions (Final Act. 7–10; see also Spec. ¶¶ 56, 58, 61). We find
no indication in the Specification that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, notwithstanding
Appellant’s contrary argument, that attributes an improvement in technology
and/or a technical field to the claimed invention or that otherwise indicates
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that the claimed invention integrates the abstract idea into a “practical
application,” as that phrase is used in the 2019 Revised Guidance.4
Appellant maintains here that the claims are patent eligible “at least
for being directed to a particular, useful application that improves another
technology or technical field” (Appeal Br. 7). Appellant asserts that because
some postal carrier systems require a user account to be charged for a user
computer system to generate a mailing label, this creates inefficiencies when
the mailing labels are actually not used, “such as requiring both human and
computational resources to generate and process refund requests for unused
mailing labels” (id. at 9).
Appellant argues that, by addressing what it characterizes as the
“technical requirement of such postal carrier systems,” the claimed invention
improves another technology or technical field, namely postal vendor
computer systems (id. at 9–10, 15). Yet, we are not persuaded, for much the
same reasons outlined by the Examiner (Ans. 6–10), that reducing the
inefficiencies associated with processing refunds for unused mailing labels,
is a technological improvement, as opposed to an improvement to the
abstract idea of processing mailing labels. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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such claims [i.e., claims to an asserted advance in the realm of abstract
ideas], without more, no matter how groundbreaking the advance.”).
Considered in light of the Specification, the claimed invention clearly
appears focused on avoiding the unnecessary expenditure of resources
required to generate and process refund requests for unused mailing labels
and providing cost savings for shippers (see, e.g., Spec. ¶ 14 (describing that
revenue collection for return shipping labels is a different problem for Postal
Services, like USPS, where there is no “after the fact” billing); id. ¶ 35
(“This method and system can replace the manual process used by the postal
service for reply mail” and “can provide cost savings for the shipper . . . as
the mailing label does have monetary value attached or assigned to it until it
is used in the course of shipping a package”)), and not on any claimed means
for achieving that goal that improves technology. This is particularly so,
where, as here, there is no indication that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, invoke any allegedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components as tools operating in their normal, routine, and ordinary
capacity.
Contrary to Appellant’s assertions, we also are not persuaded that
there is any parallel between the present claims and those at issue in either
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) or Thales Visionix Inc. v. United States, 850 F.3d 1343
(Fed. Cir. 2017) (Appeal Br. 8–9).
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Claim 1 of the ’576 patent,5 at issue in McRO, is directed to a method
for automatically animating the lip synchronization and facial expressions of
three-dimensional animated characters, and recites that the method
comprises, inter alia, “obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence.” McRO, 837 F.3d at 1307–08. The Federal Circuit
determined that the claim, when considered as a whole, is directed to a
technological improvement over existing, manual 3–D animation techniques,
and uses limited rules in a process specifically designed to achieve an
improved technological result relative to conventional industry practice. Id.
at 1316. As such, the court determined that the claim is not directed to an
abstract idea, and is patent eligible under 35 U.S.C. § 101. Id.
Appellant argues here, as described above, that the claimed invention
improves postal vendor computer systems by avoiding the unnecessary use
of human and computational resources to generate and process refund
requests for unused mailing labels. But, we are not persuaded that the
pending claims, thus, provide a technological improvement comparable to
that in McRO. Nor, contrary to Appellant’s assertions, do we agree that this
is a technological improvement analogous to the use of a particular
configuration of inertial sensors to more accurately and efficiently measure
the relative position and orientation of an object on a moving platform, as in
Thales. Improving the processing of a mailing label, by charging a
fictitiously fundable or fictitiously chargeable account in order to generate
the mailing label while shifting the expense to a later date when the labeled

5 U.S. Patent No. 6,307,576, issued October 23, 2001.
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item is actually inducted in the mail stream, may well improve a business
process. But, we are not persuaded that it achieves an improved
technological result.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly 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)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant attempts to draw an analogy between the present claims and
those in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), citing the Federal Circuit’s holding that an
inventive concept can be found in the non-conventional and non-generic
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arrangement of known conventional pieces (Appeal Br. 12–15). Yet, we can
find no parallel between claim 1 and the claims at issue in BASCOM.
There, the Federal Circuit determined that the claims were directed to
a technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by taking a known filtering
solution — i.e., a “one-size-fits-all” filter at an Internet Service Provider
(“ISP”) — and making it more dynamic and efficient by providing
individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. The court,
thus, held that the second step of the Mayo/Alice framework was satisfied
because the claimed invention “represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id.
Appellant argues that, similar to the inventive concept embodied in
the claims of BASCOM, the ordered combination of claim elements here
provides an improvement to another technology or technical field “by
resolving the issue of certain postal carrier systems having the technical
requirement that a user account . . . be charged for a user computer system to
generate a mailing label” (Appeal Br. 15). But, unlike the filtering system
improvements in BASCOM that added significantly more to the abstract idea
by improving the performance of the computer system itself, the claimed
invention here merely uses generic computing components to implement an
abstract idea, i.e., processing a mailing label.
Citing the Federal Circuit’s decision in Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018), Appellant argues that the § 101 rejection is
deficient, and should be reversed, because the Examiner has provided no
evidence that Appellant’s inventive concept is well-understood, routine, and
conventional (Appeal Br. 7, 13–14). Appellant maintains that “the
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‘inventive concept’ is not restricted to only the additional elements” and that
it “may include one or more allegedly abstract elements that, in combination
with the additional elements, form the claim’s inventive concept” (id. at 13–
14).
We do not disagree. Yet, the law also is clear that the claim elements
to be considered (when determining whether the claims include additional
elements or a combination of elements that amount to “significantly more”
than the judicial exception) cannot be the abstract idea itself. See Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)); see also BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
In Berkheimer, the Specification described an inventive feature that
stores parsed data in a purportedly unconventional manner and, thereby,
eliminates redundancies, improves system efficiency, reduces storage
requirements, and enables a single edit to a stored object to propagate
throughout all documents linked to that object. See Berkheimer, 881 F.3d
at 1369. The Federal Circuit held that these improvements, to the extent
they were captured in the claims (as they were, for example, in claims 4–7),6

6 Claim 4, for example, recites “storing a reconciled object structure in the
archive without substantial redundancy.” And the Specification states that
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created a genuine issue of material fact regarding whether the invention
described well-understood, routine, and conventional activities; therefore,
entry of summary judgment was inappropriate. Id. at 1369–70.
Appellant ostensibly takes the position here that the inventive concept
is the combination of claimed features, i.e., the claimed invention itself; and
Appellant argues that the § 101 rejection cannot be sustained because the
Examiner has offered no evidence that this “inventive concept” is well-
understood, routine and conventional (see, e.g., Appeal Br. 17 (“[I]n the
instant case, there is no evidence that the claimed invention (or the inventive
concept as a whole) was well-understood, routine, and conventional. It is
this claimed invention (which had not been done before) that improves upon
pre-existing postage vendor computer systems.”); Reply Br. 6). Yet, “the
relevant inquiry [under step two of the Mayo/Alice framework
(i.e., step 2B)] is not whether the claimed invention as a whole is
unconventional or non-routine.” BSG Tech LLC, 899 F.3d at 1290. Instead,
the question is whether the claim includes additional elements, i.e., elements
other than the abstract idea itself, that “‘transform the nature of the claim’
into a patent-eligible application.” Alice Corp., 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 79, 78).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are a “vendor computer system”;
a “database associated with the vendor computer system”; a “scanning
device”; and a “user computer system,” i.e., generic computer components

storing object structures in the archive without substantial redundancy
improves system efficiency and reduces storage costs. See Berkheimer,
881 F.3d at 1370.
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used to perform generic computer functions (Final Act. 7–10) — a
determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. ¶¶ 56, 58, 61).7
Appellant cannot reasonably contend, nor does Appellant, that there is
insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than a generic computer component to perform generic computer
functions, e.g., receiving, storing, and processing information. Indeed, the
Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer v. HP Inc.,
890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG
Tech LLC, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-

7 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–30, which fall with
claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 101 Eligibility 1–30
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