BELL AND HOWELL, LLCDownload PDFPatent Trials and Appeals BoardDec 1, 20212021001014 (P.T.A.B. Dec. 1, 2021) Copy Citation 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. Appeal 2021-001014 Application 15/356,194 2 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 Appeal 2021-001014 Application 15/356,194 3 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). Appeal 2021-001014 Application 15/356,194 4 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 Appeal 2021-001014 Application 15/356,194 5 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 Appeal 2021-001014 Application 15/356,194 6 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). Appeal 2021-001014 Application 15/356,194 7 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’ Appeal 2021-001014 Application 15/356,194 8 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 Appeal 2021-001014 Application 15/356,194 9 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 Appeal 2021-001014 Application 15/356,194 10 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. Appeal 2021-001014 Application 15/356,194 11 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. Appeal 2021-001014 Application 15/356,194 12 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 Appeal 2021-001014 Application 15/356,194 13 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 Appeal 2021-001014 Application 15/356,194 14 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. Appeal 2021-001014 Application 15/356,194 15 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 Appeal 2021-001014 Application 15/356,194 16 ‘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. Appeal 2021-001014 Application 15/356,194 17 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 Appeal 2021-001014 Application 15/356,194 18 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 Appeal 2021-001014 Application 15/356,194 19 “[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 Appeal 2021-001014 Application 15/356,194 20 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. Appeal 2021-001014 Application 15/356,194 21 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. Appeal 2021-001014 Application 15/356,194 22 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). 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