BELL AND HOWELL, LLC

Patent Trials and Appeals Board

Dec 1, 2021

2021001014 (P.T.A.B. Dec. 1, 2021)

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.
15/356,194 11/18/2016 Mark Van Gorp 3237/9/5 DIV 1091
25297 7590 12/01/2021
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK VAN GORP, WALTER S. CONARD,
RIMA FRANKLIN and MARK WOOLSTON

Appeal 2021-001014
Application 15/356,194
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision to reject claims 1–3, which are all of the pending
claims. 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. Appellant identifies the real party in interest as FLUENCE
AUTOMATION LLC. Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention generally relates to a system for
transporting and imaging a mail piece having a printed mailing address.
Spec. ¶ 2.
Claim 1 is the independent claim on appeal. Claim 1, reproduced
below, with modified formatting and bracketed notations, is illustrative of
the claimed subject matter.
1. A method of processing a mailing including a plurality
of addressed mail pieces, the method comprising:
[a] loading the plurality of mail pieces onto a feeder of a
mail processing system;
[b] individually feeding, using the feeder, a first mail
piece and a second mail piece into the mail processing system;
[c] individually transporting, using a transport of the mail
processing system, the first mail piece and the second mail piece
to an imaging component of the mail processing system;
[d] imaging, using the imaging component, an address for
each of the first mail piece and the second mail piece to produce
an address image for each of the first mail piece and the second
mail piece;
[e] reading, using an optical character recognition (OCR)
device, the address images of the first mail piece and the second
mail piece;
[f] comparing the address in each of the address images
of the first mail piece and the second mail piece to a client
address list to determine if the address in the address image of
the first mail piece and/or the second mail piece are present on
the client address list, wherein the client address list was used to
address each of the plurality of addressed mail pieces of the
mailing;
[g] rejecting the first mail piece upon a determination that
the address in the address image of the first mail piece is
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determined not to be on the client address list or upon a
determination that the first mail piece is marked to be purged;
and
[h] continuing to process the second mail piece upon a
determination that the address in the address image of the second
mail piece is determined to be on the client address list.
Appeal Br. 15 (Claim App.).
REJECTIONS
Claims 1–3 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Claims 1–3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hayduchok (US 2004/0005080 A1, pub. Jan. 8, 2004) and
McLintock (US 2003/0212644 A1, pub. Nov. 13, 2003).

ANALYSIS
35 U.S.C. § 101 Framework
Appellant argues claims 1–3 as a group. Appeal Br. 3–8; Reply
Br. 2–10. 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).
Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include 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).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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, 67 (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.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(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. (alterations in original) (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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into
the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019
(“MPEP”) in June 2020. “The guidance sets out agency policy with respect
to the USPTO’s interpretation of the subject matter eligibility requirements
of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the
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Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance,” the Guidance “does not create any right or benefit,
substantive or procedural, enforceable by any party against the USPTO.” Id.
The Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
at 50.
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).2
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).

2 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg.
at 54–55; MPEP § 2106.04(d).
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Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of the Guidance, the Examiner determines that independent claim 1
recites broadly
loading mail into some type of input, moving the mail to an area
to be read, comparing written addresses to a list, and either
rejecting or continu[ing] processing the mail based on the
comparison; [and] thus the claim recites managing personal
behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions).
Final Act. 8. As such, the Examiner characterizes claim 1 as falling under
under the “Methods of Organizing Human Activity” grouping of abstract
ideas enumerated in the Guidance. Id.; Reply Br. 4. Under Prong Two of
the Guidance, the Examiner determines that the identified judicial exception
is not integrated into a practical application because “the claim merely uses
generic computer components as tools (feeder, mail processing system,
imaging component, OCR device) to carry out the abstract idea.” Final
Act. 9.
In response, Appellant asserts that the Examiner erroneously
characterizes claim 1 as “fall[ing] within the ‘managing personal behavior’
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and/or ‘relationships or interactions between people’” category of abstract
ideas. Appeal Br. 5. Instead, Appellant argues that “[t]he Examiner appears
to be improperly conflating ‘human action’ with ‘methods of organizing
human activity.’” Id. at 6 (citing MPEP § 2106.04(a)(2)(II)).
Under the first step of the Mayo/Alice framework and Step 2A of the
Guidance, we first determine to what claim 1 is directed, i.e., whether
claim 1 recites an abstract idea and if so, whether claim 1 is directed to that
abstract idea. 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
claim 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 Enfish, LLC, 822 F.3d 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.
Reciting a Judicial Exception
In making this determination, we note that the Specification is titled
“METHOD AND SYSTEM FOR IN–LINE ADDRESS QUALITY AND
MAIL PREPARATION ON AN INDICIA PRINTING SYSTEM,” and is
related generally to “transporting and imaging a mail piece having a printed
mailing address.” Spec. ¶ 2. According to the Specification, “[i]in order to
earn mail postage discounts, address list service providers have to make all
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addresses in a mailing list meet postal authority standards for quality and
move up and reorder the addresses in the list into pre-sort groupings.” Id.
¶ 4. However, as the Specification points out, “there is no option for a small
volume mailer to earn mail postage discounts on their own with a mailing
machine that can meet USPS standards and be affordable to the small
mailer.” Id. In this regard, the Specification informs us that
inserters and sorters are not able to print the correct postage
indicia on each mail piece based on weight and pre-sort postage
discount that the mail piece has been qualified to receive.
Currently, postage meters can not operate at the throughput rate
associated with sorters. Although postage meters are integrated
onto inserters and can adjust the postage applied based on
weight, they can neither adjust postage applied based on pre-sort
discount qualification, nor can they print a delivery point barcode
in the clear zone based on address quality updates.
Id.
Consequently, the Specification identifies that “a need exists for a
system and method that can meet the needs of a variety of sized mailers such
as postage metering and integrate the functionality needed to qualify for mail
discounts.” Spec. ¶ 5. And, to address this need, the present invention
provides “a method of processing a mailing including a plurality of
addressed mail pieces” (id. ¶ 8) that “alleviate[s] one or more of the above
noted problems with a table top mailing machine that implements the USPS
requirements for pre-sorted bulk mail discounted postage for the mixed
AADC bulk mail postage discount rate for first class, [s]tandard class and
for non-profit standard class.” Id. ¶ 22.
Consistent with this disclosure, independent claim 1 recites “[a]
method of processing a mailing including a plurality of addressed mail
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pieces” including steps for receiving and handling mail pieces, i.e., “loading
the plurality of mail pieces,” “individually feeding,” “individually
transporting,” (limitations [a]–[c]); receiving information, i.e., “imaging,”
“reading,” (limitations [d], [e]); and analyzing information, i.e., “comparing
the address[es],” “rejecting the first mail piece,” “continuing to process the
second mail piece” (limitations [f]–[h]). Appeal Br. 15 (Claim App.).
When considered collectively and under the broadest reasonable
interpretation, independent claim 1, as summarized above, recites a series of
steps for receiving and handling mail pieces, receiving information, and
analyzing information in order to process a plurality of addressed mail
pieces.3 This is an abstract idea which may be characterized as a “[c]ertain
method[] of organizing human activity— . . . commercial or legal
interactions (including agreements in the form of contracts, legal obligations,
advertising, marketing or sales activities or behaviors, and business
relations) and managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II).
This is consistent with the Examiner’s characterization. Final Act. 8; Ans.
3–5.
The courts have held similar concepts to be abstract. For example, the
Federal Circuit has held abstract the concepts of receiving, screening, and
distributing email such as in a conventional business practice–the screening

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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by corporate organizations in Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1316–1318 (Fed. Cir. 2016) (The court analogized the claims
to “a corporate mailroom” that “receive[s] correspondence, keep[s] business
rules defining actions to be taken regarding correspondence based on
attributes of the correspondence, appl[ies] those business rules to
correspondence, and take[s] certain actions based on the application of
business rules.”), of collecting data, recognizing certain data within the
collected data set, and storing that recognized data in memory in Content
Extraction & Trans. LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and
storage is undisputedly well-known. Indeed, humans have always
performed these functions.”), and of affixing a generated barcode to a mail
object and sending the mail object through the mail system in Secured Mail
Solutions LLC. v. Universal Wilde, Inc. 873 F.3d 905, 911 (Fed. Cir. 2017)
(“[E]ach step of the process is directed to the abstract process of
communicating information about a mail object using a personalized
marking.”). Accordingly, we conclude independent claim 1 recites a way of
receiving, handling, and analyzing i.e., screening, by comparing and
rejecting or accepting mail pieces, analogous to the business practices of a
mailroom or post office. See Intellectual Ventures I LLC, 838 F.3d at 1318
(“[T]he claimed systems and methods of screening messages are abstract
ideas, ‘fundamental . . . practice[s] long prevalent in our system’ and
‘method[s] of organizing human activity’” citing Alice). As such, we
disagree with Appellant’s assertion that the Examiner improperly
characterizes independent claim 1 as being analogous to “certain methods of
organizing human activity.” Appeal Br. 6.
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). Here, the Examiner identifies the “feeder, mail processing
system, imaging component, [and] OCR device” as the additional elements
recited in claim 1. Final Act. 9. The Examiner notes that these additional
elements are insufficient to integrate the judicial exception identified in
claim 1 into a practical application because claim 1 “merely uses generic
computer components as tools,” and recites the “extra[-]solution activity of
imaging information from the mailpieces using an OCR device.” Id. at 9.
We agree with the Examiner.
As is clear from the Specification, there is no indication that the
processes recited in claim 1 require any machinery used beyond its ordinary
capacity or any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any asserted inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See,
e.g., Spec. ¶ 25 (“The mail processing system 100 includes a general
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purpose mail piece feeder 105 to singulate and feed one mail piece at a time
into the transport 106 from a stack of mail pieces.”), ¶ 26 (“The imaging
device 110 . . . includes a line scan camera and folded light path . . . which
are housed in the box assembly 111.”), ¶ 31 (“The contents of the address
block are read with OCR processing 410 and looked up in the CASS
certified address directory 415”), ¶ 48 (“[T]he system computer 150 and the
image processing computer 305 may be a PC based implementation of a
central control processing system.”), ¶ 21 (“[W]ell known methods,
procedures, components, and circuitry have been described at a relatively
high-level, without detail, in order to avoid unnecessarily obscuring aspects
of the present teachings.”). See also 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.”).
Instead, independent claim 1, unlike the claims found non-abstract in
prior cases, uses generic computer technology to receive information and
analyze information for the purpose of processing mail pieces. See Spec.
¶¶ 45–56; cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused
on a specific asserted improvement in computer animation”).
Appellant argues that “several of the steps recited in claim 1 are
performed by a component of the mail processing system” such as a
transport of the mail processing system, the imaging device, and an optical
character recognition device for limitations [c]–[e]. Appeal Br. 8; Reply
Br. 8–9. According to Appellant, “the mere fact that the feeder need not be
some acutely specialized bespoke device having assumedly no other suitable
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use other than the claimed system does not establish that the feeder is a
generic computer component.” Reply Br. 9. However, as the Examiner
points out, “the claim includes limitations that, but for the generic computer
language, encompasses a user manually loading mail into some type of
input, moving the mail to an area to be read, comparing written addresses to
a list, and either rejecting or continu[ing] processing the mail based on the
comparison.” Ans. 13. Simply reciting and requiring machinery for the
functions of the claims does not change the result that the claim recites an
abstract idea. At best, the specific physical elements “limit[] the invention
to a technological environment for which to apply the underlying abstract
concept.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court
and [the Federal Circuit] have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.”); Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019) (“[T]he physicality of the
paper checks being processed and transported is not by itself enough to
exempt the claims from being directed to an abstract idea.”).
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1 do not integrate the judicial exception
into a practical application, as the term is used in the Guidance, and we are
not persuaded of error in the Examiner’s determination that claim 1 is
directed to an abstract idea.
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Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I).
Here, we agree with the Examiner that “Appellant’s claims, though
reciting the use of machinery, merely recites the use of generic computer
elements and machines as tools to carry out the abstract idea, and thus do not
integrate the abstract idea into a practical application or recite significantly
more than the abstract idea itself.” Ans. 12.
Taking the claimed elements separately, the functions performed by
the “feeder of a mail processing system,” “transport of the mail processing
system,” “imaging component,” and “optical character recognition (OCR)
device” are purely conventional. See, e.g., Spec. ¶¶ 21, 25, 26, 31, 45–56.
These generic components operate in their ordinary and conventional
capacities to perform the well-understood, routine, and conventional
functions of receiving and handling mail pieces and receiving and analyzing
information. See Solutran, 931 F.3d at 1168 (“[T]he claims simply recite
conventional actions in a generic way (e.g., capture data for a file, scan
check, move check to a second location, such as a back room) and do not
purport to improve any underlying technology”); TLI Commc’ns LLC v. AV
Auto., LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (“[T]he claims’ recitation of
a ‘telephone unit,’ a ‘server’, an ‘image analysis unit,’ and a ‘control unit’
fail to add an inventive concept sufficient to bring the abstract idea into the
realm of patentability”); Content Extraction, 776 F.3d at 1348 (“There is no
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‘inventive concept’ in [Content Extraction’s] use of a generic scanner and
computer to perform well-understood, routine, and conventional activities
commonly used in industry”); Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and ‘data storage unit’
capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”).
Considered as an ordered combination, the elements of independent
claim 1 add nothing that is not already present when the processes are
considered separately. The sequence of receiving and handling mail pieces,
receiving and analyzing information in order to process mail pieces is
equally generic and conventional or otherwise held to be abstract. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354–56 (Fed.
Cir. 2016) (holding that the sequence of gathering, analyzing, and displaying
in real-time was abstract); see also Intellectual Ventures I, 838 F.3d at 1318
(The court noted that the patent was “directed to a conventional business
practice–the screening of messages by corporate organizations–in the
context of electronic communications.”).
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 independent claim 1, and claims 2 and 3,
which fall with independent claim 1.

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Obviousness
Claims 1–3
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Hayduchok and McLintock fails to disclose or suggest
comparing the address in each of the address images of the first
mail piece and the second mail piece to a client address list to
determine if the address in the address image of the first mail
piece and/or the second mail piece are present on the client
address list, wherein the client address list was used to address
each of the plurality of addressed mail pieces of the mailing,
as recited by limitation [f] of independent claim 1. Appeal Br. 8–14; Reply
Br. 10–19.
The Examiner maintains the rejection is proper, and cites paragraphs
80, 82, 84, 89, and 90 of Hayduchok, and paragraphs 11, 12, 31, 36, 41 of
McLintock, as disclosing the argued limitation. Final Act. 13, 14; Ans. 16–
25.
Hayduchok is directed to a system “for scanning pieces of mail and
determining the addresses for the pieces of mail.” Hayduchok ¶ 1.
Hayduchok describes that its system “scans each piece of mail 5 to
determine the recipient’s address, then weighs each piece and applies a label
with the appropriate postage.” Id. ¶ 23. According to Hayduchok, “the
scanned address may be compared against a database to ensure that the
scanned mailing information is correct.” Id. ¶ 80. Hayduchok describes that
a “zipcode assignment module includes a program designed to analyze
address information to determine whether the address information correlates
to an actual postal address.” Id. ¶ 82. Hayduchok explains that
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if the system computer is not able to identify a valid address
based on the image data, the system computer indicates that the
address for the mail piece is indeterminate and the system
controller electronically tags the piece as unvalidated so that the
piece is rejected. Similarly, if the address is determined, the
system computer may communicate information regarding the
mailing address for the piece, such as a 5-digit or delivery point
zipcode for the piece. Subsequently, the zipcode may be
converted into a barcode, such as a POSTNET barcode, which,
in turn, may be applied to the mail piece.
Id. ¶ 84.
McLintock is directed to “the field of bulk mailing, and in particular
to the area of controlled acceptance mail processing.” McLintock ¶ 1.
McLintock discloses that “a second type of indicium, or batch mail
indicium, is introduced into a remote metering system,” and that “[t]he batch
mail indicium shall be mail batch and mailer specific, allowing . . . the
identification of the mail batch, the mailer, and the postage franking value
associated with each mailpiece.” Id. ¶ 10. McLintock further discloses that
“[u]nlike the standard mailpiece indicia for non-batch mailpieces, which are
unique to a single mailpiece, the batch mail indicia shall be acceptable on
numerous mailpieces, and indeed shall be required to be identical on all
mailpieces belonging to a single batch.” Id.
According to McLintock, a large volume customer “orders a postage
stampcode, or indicium, for use on a mail piece to be posted” and “specifies
certain details about the mail to be posted.” Id. ¶ 19; see also ¶¶ 20–24 (mail
delivery data may include “the estimated number of mailpieces,” “the mail
sorting center receiving the mail delivery (Point of Postage),” “the mail
class,” “estimated date and time of delivery to Point of Postage,” and “mail
type, as classified by the dimensions or weight.”). McLintock discloses that
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“[w]hen a batch mailing is delivered to a postal sorting facility, some sample
mailpieces are extracted 201 from the batch” and that “the stampcode data is
extracted or read from the sample mailpieces.” Id. ¶ 31. McLintock further
discloses that “[t]he manifest data delivered to the mail carrier with the
stampcode order 108 is retrieved from the data store of all batch manifest
information” and “the data derived from the sample mailpieces is tested 203
to ensure compliance with the manifest data for the batch.” Id.
McLintock’s system includes a mail sorting process in which
“[d]uring transportation through a mail sorting machine, the stampcode is
read 301, i.e. scanned, recognized and interpreted, to reproduce the
stampcode data stored in the revenue protection system 110.” Id. ¶ 32.
McLintock describes “[n]on-large volume 320, i.e. non-batch, stampcodes,
are only used singularly and are checked for validity to ensure that the
stampcode: is a genuine stampcode, has been purchased, and has not yet
been processed, i.e. not previously used on a mailpiece.” Id. ¶¶ 32–25.
McLintock also describes that for large volume stampcodes “[t]he validity
checks carried out 306 ensure that the stampcode: is a genuine stampcode,
has been purchased, and is part of a valid batch mailing still being processed
within the allowable time window.” Id. ¶¶ 37–40.
We have reviewed the cited portions of Hayduchok and McLintock,
and agree with Appellant that the cited portions of Hayduchok and
McLintock fail to disclose or suggest limitation [f] of independent claim 1.
The Examiner finds that McLintock discloses “reading address images from
multiple mail pieces and comparing the read addresses to a manifest
documentation.” Ans. 23–24 (citing McLintock ¶¶ 9, 11, 12). According to
the Examiner, “the manifest documentation includes a list of addresses for
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items being mailed and is thus ‘used to address each of the plurality of
addressed mail pieces of the mailing.” Id. at 24. We disagree.
Instead, we agree with Appellant that the Examiner has not shown that
the manifest documentation in McLintock contains address information that
“was used to address each of the plurality of addressed mail pieces of the
mailing for the mailpieces,” as required by limitation [f]. Reply Br. 14–15.
Here, McLintock discloses that “[t]he data specified during the ordering of
postage is stored together with the generated stampcode for revenue
protection and billing purposes 110.” McLintock ¶ 25. McLintock
identifies that the data specified during the ordering includes “the estimated
number of mailpieces,” “mail sorting center receiving the mail delivery
(Point of Postage),” “mail class (e.g. quality of service, presorting, bar-
coded),” “estimated date and time of delivery to Point of Postage,” and
“mail type, as classified by the dimensions or weight.” Id. ¶¶ 19–24.
Consequently, even if McLintock refers to “information about the
mailpieces (e.g., destination address)” (McLintock ¶ 11), we agree with
Appellant that “the mere statement that the indicium may be corroborated
against the destination address does not mean that McLintock discloses
reading the destination address, but instead merely discloses reading an
indicium that can, in a secondary step, be corroborated to the destination
address.” Reply Br. 14–15. For example, McLintock discloses that if a
large volume mailpiece that fails to satisfy a stampcode validity check (see,
e.g., McLintock ¶¶ 37–40) is identified, the identified mailpiece may be
reviewed “using the mailpiece data gathered in step 309 (e.g.[,] destination
address).” Id. ¶ 41.
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The Examiner also finds that “McLintock has explicitly shown using a
scanner to extract stampcodes information, (which include delivery
addresses, see paragraphs 9, 11, and 12), and comparing this information to
a manifest list, which includes destination addresses used to address each
mail piece.” Ans. 24 (citing McLintock ¶¶ 31, 36) (emphases omitted).
However, we do not see, and the Examiner does not explain adequately
where McLintock discloses that the “stampcode[] information” includes
“destination addresses” at least because McLintock discloses that the
stampcode used in a batch of mailpieces is the same of each mailpiece in
that particular batch. See McLintock ¶ 10 (“Unlike the standard mailpiece
indicia for non-batch mail pieces, which are unique to a single mailpiece, the
batch mail indicia shall be acceptable on numerous mailpieces, and indeed
shall be required to be identical on all mailpieces belonging to a single
batch.”). The Examiner does not rely on Hayduchok to address “that the
client list was used to address the mail pieces that make up the mailing being
processed.” Ans. 19; see also id. (Hayduchok “describes comparing each
mail piece’s read address to a database to determine if it is in the database.”).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Hayduchok and McLintock. For the same reasons, we also do not sustain
the Examiner’s rejection of dependent claims 2 and 3, which ultimately
depend from independent claim 1.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 101 Eligibility 1–3

1–3 103 Hayduchok,
McLintock
1–3
Overall
Outcome
1–3

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