Daniel Lievens et al.

Patent Trials and Appeals Board

Oct 17, 2019

14200301 - (D) (P.T.A.B. Oct. 17, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/200,301 03/07/2014 Daniel Lievens IPP201327904/258417 1084
143177 7590 10/17/2019
Shook, Hardy & Bacon L.L.P.
(United Parcel Service, Inc.)
2555 Grand Blvd.
Kansas City, MO 64108-2613
EXAMINER
TUNGATE, SCOTT MICHAEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL LIEVENS, VINCENT DETHIER, and LUC PIRENNE
____________

Appeal 2018-002491
Application 14/200,301
Technology Center 3600
____________

Before ANTON W. FETTING, 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 1–20. 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 August 4, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018),
and the Examiner’s Answer (“Ans.,” mailed November 2, 2017) and Final
Office Action (“Final Act.,” mailed February 8, 2017). Appellant identifies
the real party in interest as United Parcel Service of America, Inc. Appeal
Br. 3.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “routing parcels to attended
delivery/pickup locations (e.g., other than an individual’s home and/or
office) based on estimating the attended delivery/pickup location’s capacity”
(Spec. Abstract).
Claims 1, 15, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer system comprising:
at least one processor, wherein the at least one processor
is configured for:
(A) receiving at a logistics server via Internet, capacity
information associated with a first attended delivery/pickup
location associated with an order made via the Internet, wherein:
i) the first attended delivery/pickup location
comprises:
1) a location, other than a residence or
employer associated with a first parcel recipient;
and
2) a storage area comprising a physical
storage space defining a storage volume for storing
at least one accepted parcel; and
ii) the capacity information comprises:
the storage volume of the storage area for
storing one or more accepted parcels;
a number of one or more currently stored
parcels currently stored in the storage area; and
a volume of the one or more currently stored
parcels, wherein the system is configured to define
the volume of the one or more currently stored
parcels based on one or more dimensions of the one
or more currently stored parcels;
(B) determining a current storage area usage of the
physical storage space at the first attended delivery/pickup
location using the storage volume and the volume of the one or
more currently stored parcels;
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(C) determining an estimated average storage time for
an average parcel stored at the first attended delivery/pickup
location based at least in part on a respective length of time that
each of a plurality of parcels is stored at the first attended
delivery/pickup location before it is picked up by a respective
consignee;
(D) receiving, at a logistics server, first delivery
information associated with one or more parcels associated with
the first parcel recipient, wherein the first delivery information
comprises:
i) a first estimated time of delivery associated
with the one or more
parcels associated with the first parcel recipient; and
ii) a first indication of the first parcel recipient
to pick up the one or more parcels at the first attended
delivery/pickup location;
(E) estimating a capacity of the first attended
delivery/pickup location at the estimated time of delivery of the
one or more parcels based at least in part on:
i) the capacity information associated with the
first attended delivery/pickup location; and
ii) the estimated storage time for the average
parcel stored at the first attended delivery/pickup location,
wherein estimating the capacity of the first attended
delivery/pickup location at the estimated time of delivery
comprises:
using the number of one or more currently
stored parcels and the estimated storage time for the
average parcel stored at the first attended
delivery/pickup location to estimate a number of the
one or more currently stored parcels that are likely
to be picked up before the estimated time of
delivery; and
using the number of the one or more currently
stored parcels that are likely to be picked up before
the estimated time of delivery and the current
storage area usage to determine an unused storage
area volume at the estimated time of delivery;
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(F) determining whether the first attended
delivery/pickup location will have sufficient capacity to receive
the one or more parcels associated with the first parcel recipient
at the estimated time of delivery based at least in part on the
estimated capacity of the unused storage area volume at the
estimated time of delivery at the first attended delivery/pickup
location to ensure that there will be enough physical space in the
storage area at the first attended delivery/pickup location to
accommodate the one or more parcels at the estimated time of
delivery; and
(G) at least partially in response to determining that the
first attended delivery/pickup location will not have sufficient
capacity to receive the one or more parcels associated with the
first parcel recipient at the estimated time of delivery,
automatically routing the one or more parcels associated with the
first parcel recipient to a first alternate attended delivery/pickup
location and reserving space for the one or more parcels at the
first alternate attended delivery/pickup location, wherein:
i) the first alternative attended delivery/pickup
location comprises an attended delivery/pickup location
that is different than the first attended delivery/pickup
location;
ii) the first alternative attended delivery/pickup
location and the first attended delivery/pickup location are
within a network of attended delivery/pickup locations;
and
iii) automatically routing the one or more parcels
comprises communicating to a logistics company that is
transporting the one or more parcels by transmitting a
message indicating that the first attended delivery/pickup
location will not accept the one more parcels due to a lack
of capacity.
REJECTION
Claims 1, 4–8, 11–15, and 18–20 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
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ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 11–26).
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).
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).
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In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “facilitating delivery of a parcel to
an alternate location based on determined capacity information based on
various factors,” which the Examiner reasoned is “a ‘mathematical
relationship/formula similar to the idea of calculating the difference between
local and average data values found by the court[ ] to be abstract” in In re
Abele, 684 F.2d 902 (CCPA 1982) or alternatively “is a ‘idea of itself’
similar to the idea of comparing new and stored information and using rules
to identify options found by the court[ ] to be abstract” in SmartGene2 (Final
Act. 8–9). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception (id. at 9–10).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 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
is 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

2 SmartGene, Inc. v. Advanced Biological Laboratories, 555 F. App’x 950
(Fed. Cir. 2014).
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Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.3
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

3 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.
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that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an 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 claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, the Specification
(including the claim language) makes clear that the claims focus on an
abstract idea, and not on any improvement to computer technology and/or
functionality.
The Specification is entitled “SYSTEMS AND METHODS OF
MANAGING THE CAPACITY OF ATTENDED DELIVERY/PICKUP
LOCATIONS,” and notes, in the Background section, that an increase in
Internet commerce has led to an increase in the number of parcels delivered
to individual homes (Spec. ¶ 2). The Specification describes that this rise in
“home delivery” is not always convenient such that it may be desirable to
deliver parcels to alternative delivery locations (e.g., locations other than an
individual’s home or business); however, according to the Specification, it
can be difficult to determine whether particular alternative delivery locations
are available to receive and distribute parcels (id.).
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The claimed invention is intended to address this issue and “others, of
prior art systems and methods” (id.). Claim 1, thus, recites a system
comprising at least one processor configured to: (1) receive capacity
information associated with a first delivery/pickup location other than a
residence or employer of a first parcel recipient, i.e.,
receiving at a logistics server via Internet, capacity
information associated with a first attended delivery/pickup
location associated with an order made via the Internet, wherein:
i) the first attended delivery/pickup location
comprises:
1) a location, other than a residence or
employer associated with a first parcel recipient;
and
2) a storage area comprising a physical
storage space defining a storage volume for storing
at least one accepted parcel; and
ii) the capacity information comprises:
the storage volume of the storage area for
storing one or more accepted parcels;
a number of one or more currently stored
parcels currently stored in the storage area; and
a volume of the one or more currently stored
parcels, wherein the system is configured to define
the volume of the one or more currently stored
parcels based on one or more dimensions of the one
or more currently stored parcels
(limitation (A)); (2) determine the storage area currently being used at the
first delivery/pickup location and the average length of time a parcel is
stored at the location before being picked up, i.e.,
determining a current storage area usage of the physical
storage space at the first attended delivery/pickup location using
the storage volume and the volume of the one or more currently
stored parcels; [and]
determining an estimated average storage time for an
average parcel stored at the first attended delivery/pickup
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location based at least in part on a respective length of time that
each of a plurality of parcels is stored at the first attended
delivery/pickup location before it is picked up by a respective
consignee
(limitations (B) and (C)); (3) receive delivery information regarding one or
more parcels associated with the first parcel recipient, i.e.,
receiving, at a logistics server, first delivery information
associated with one or more parcels associated with the first
parcel recipient, wherein the first delivery information
comprises:
i) a first estimated time of delivery associated
with the one or more
parcels associated with the first parcel recipient; and
ii) a first indication of the first parcel recipient
to pick up the one or more parcels at the first attended
delivery/pickup location
(limitation (D)); (4) estimate the available capacity at the first
delivery/pickup location and determine whether the location will have
sufficient capacity to store the one or more parcels at the time of delivery,
i.e.,
estimating a capacity of the first attended delivery/pickup
location at the estimated time of delivery of the one or more
parcels based at least in part on:
i) the capacity information associated with the
first attended delivery/pickup location; and
ii) the estimated storage time for the average
parcel stored at the first attended delivery/pickup location,
wherein estimating the capacity of the first attended
delivery/pickup location at the estimated time of delivery
comprises:
using the number of one or more currently
stored parcels and the estimated storage time for the
average parcel stored at the first attended
delivery/pickup location to estimate a number of the
one or more currently stored parcels that are likely
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to be picked up before the estimated time of
delivery; and
using the number of the one or more currently
stored parcels that are likely to be picked up before
the estimated time of delivery and the current
storage area usage to determine an unused storage
area volume at the estimated time of delivery;
determining whether the first attended delivery/pickup
location will have sufficient capacity to receive the one or more
parcels associated with the first parcel recipient at the estimated
time of delivery based at least in part on the estimated capacity
of the unused storage area volume at the estimated time of
delivery at the first attended delivery/pickup location to ensure
that there will be enough physical space in the storage area at the
first attended delivery/pickup location to accommodate the one
or more parcels at the estimated time of delivery
(limitations (E) and (F)); and (5) automatically route the parcels to, and
reserve space at a first alternate delivery/pickup location if the first
delivery/pickup location will not have sufficient capacity to receive the one
or more parcels, i.e.,
at least partially in response to determining that the first
attended delivery/pickup location will not have sufficient
capacity to receive the one or more parcels associated with the
first parcel recipient at the estimated time of delivery,
automatically routing the one or more parcels associated with the
first parcel recipient to a first alternate attended delivery/pickup
location and reserving space for the one or more parcels at the
first alternate attended delivery/pickup location, wherein:
i) the first alternative attended delivery/pickup
location comprises an attended delivery/pickup location
that is different than the first attended delivery/pickup
location;
ii) the first alternative attended delivery/pickup
location and the first attended delivery/pickup location are
within a network of attended delivery/pickup locations;
and
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iii) automatically routing the one or more parcels
comprises communicating to a logistics company that is
transporting the one or more parcels by transmitting a
message indicating that the first attended delivery/pickup
location will not accept the one more parcels due to a lack
of capacity
(limitation (G)). These limitations, when given their broadest reasonable
interpretation, recite determining whether an original delivery/pickup
location will have sufficient capacity to receive a package at its estimated
time of the delivery and, if not, routing the package to an alternate location
and reserving space at the alternate location to ensure that delivery can be
successfully executed. Although claim 1 recites the use of “at least one
processor,” the underlying processes recited in the claim are all acts that, as
the Examiner observes (see Final Act. 4), could be performed by a human,
e.g., mentally or manually, using pen and paper, without the use of a
computer or any other machine. For example, a person, performing
calculations in his or her head or using pen and paper, could estimate the
amount of storage space available at a first location and determine whether
the location will have sufficient capacity to receive one or more parcels at
their estimated delivery time. If necessary, i.e., based on insufficient storage
capacity, a person also could route the parcels to an alternate location and
reserve space at that location, via either written or oral communication.
Simply put, claim 1 recites a mental process, i.e., a concept performed in the
human mind, including an evaluation or judgment, and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (holding that method steps that can be performed in the human mind,
or by a human using a pen and paper, are unpatentable mental processes).
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The Examiner determined, and we agree, that the only additional
elements recited in claim 1, beyond the abstract idea, are the claimed
“logistics server” and the “at least one processor” that performs the method
steps (Final Act. 9) — elements that are described in the Specification at a
high level of generality, i.e., as generic computer components (see, e.g.,
Spec. ¶¶ 22–35). We find no indication in the Specification, nor does
Appellant direct us to any indication, 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, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.4
Appellant argues that the claims are not directed to an abstract idea,
but instead are patent eligible at least because the claims recite an
improvement in computer-related technology similar to McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) and
DDR Holdings (Appeal Br. 19–22). Yet, we find no parallel between the
present claims and those in McRO, which were directed to a “technological
improvement over the existing, manual 3-D animation techniques” through
the “use of limited rules specifically designed to achieve an improved
technological result in conventional industry practice.” McRO, 837 F.3d
at 1316. We also find no parallel between the present claims and those in
DDR Holdings, which addressed a problem (i.e., retaining website visitors
who, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be transported instantly away from a host’s
website after “clicking” on an advertisement and activating a hyperlink)
arising specifically in the realm of computer networks, and whose solution is
necessarily rooted in computer technology. DDR Holdings, 773 F.3d
at 1257.

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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Appellant asserts that at the time the present invention was made, “a
significant problem [— one that Appellant characterizes as “The
Technological Problem” —] existed in the logistics setting: namely, the
ability to determine whether a delivery location was able to receive and
distribute parcels” (Appeal Br. 20). Appellant explains that this problem
was significant in that “it was, and still is, often necessary for someone to
have a parcel delivered to a location other than the person’s home” (id.
at 21); yet, neither the person nor the retailer or logistics provider could
ensure that delivery to a preferred location was possible (id.). According to
Appellant, prior conventional systems could neither provide this type of
information “nor . . . take proactive steps to insure that third party parcels,
like those stored at a delivery location, did not negatively impact the
successful delivery of the parcel of interest” (id.).
Appellant asserts that the present claims provide a “technological
solution” to this “technological problem” by allowing a logistics server to
(1) receive information associated with an Internet order; (2) receive
information from a first location, i.e., the intended delivery location;
(3) determine the availability of the first location to receive the parcel
associated with the order; and (4) if the first location is unavailable,
automatically route the parcel to an alternate delivery location (id. at 21–22).
Appellant maintains that, as was the case in McRO and DDR Holdings, the
claims “present a unique way to improve computer technology,” i.e., “a
technological improvement over the existing inaccurate and costly process
of blind facilitation of parcel routing based on delivery orders without
analyzing the feasibility of the delivery” (id. at 22). Yet, Appellant does not
explain how, and we fail to see how, determining whether a first location is
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available to receive a parcel, and routing the parcel to an alternate location if
the first location is unavailable, amounts to an improvement in computer
technology.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” and “uses . . . limited rules
in a process specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313.
Appellant has not identified any analogous improvement here that is
attributable to the claimed invention. Although confirming the availability
of storage capacity at an intended delivery location before routing a parcel to
that location may improve a business process, it does not achieve an
improved technological result.
Responding to the Examiner’s Answer, Appellant asserts in the Reply
Brief that manual execution of the claimed method “would rely on human
subjectivity and experience to determine how much capacity was present,
how long it would be available, if it would be available, so on and so forth”
(Reply Br. 18). And Appellant argues that the present claims include rules
“similar to McRO in that they remove the subjectivity associated with
human-performance of the method” (id.). Yet, we find no rules in claim 1
comparable to those in McRO nor any objective standards recited in the
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claim for “determin[ing] how much capacity was present, how long it would
be available, if it would be available, so on and so forth.”
In other words, to the extent manual execution of the claimed method
would rely on subjectivity, we find nothing in the claim that eliminates any
such reliance. Claim 1, in fact, expressly calls for estimating the capacity of
the first attended delivery/pickup location at the estimated time of delivery
of the one or more parcels based, inter alia, on “the number of the one or
more currently stored parcels that are likely to be picked up before the
estimated time of delivery” — which seemingly necessarily involves some
measure of speculation.
We also do not find, and Appellant does not identify, any
modification to the routine and conventional functioning of computer
network technology analogous to that in DDR Holdings. At best, the
claimed invention appears to use generic computer components to perform
an abstract business practice (i.e., facilitating the delivery of a parcel to an
alternative delivery location when the original delivery location is
determined to be unable to accept the delivery).
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic 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
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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 directs our attention to the Federal Circuit’s holdings in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1302 (Fed. Cir. 2016) (id. at 23–24). And Appellant argues
that under BASCOM and Amdocs, the pending claims contain an inventive
concept because “they provide for a specific, unconventional technological
solution to a technological problem that does not foreclose alternative
solutions” (id. at 24).
To the extent Appellant intends, by that argument, that the claims are
patent eligible because they pose no risk of preemption, we note that
preemption is not the sole test for patent eligibility. Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice Corp.,
573 U.S. at 216, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
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preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Appellant notes that the claim elements facilitate delivery
automatically to an alternative delivery location when the original location is
determined to be unable to accept the delivery, which may “eliminate any
inaccurate and costly parcel routing created by decision engines blindly
facilitating parcel routing” (Appeal Br. 26). And Appellant argues that “this
rises to the level of significantly more because it eliminates any mutations in
the data that exist if the Internet order, logistics server, logistics company,
and delivery location are not in communication with each other” (id.). Yet,
we find nothing in claim 1 regarding the elimination of data mutations. Nor,
for that matter, do we find any such disclosure elsewhere in the
Specification.
It also is significant here that the limitations to which Appellant
ostensibly refers are part of the abstract idea itself; they are not additional
elements to be considered when determining whether claim 1 includes
additional elements or a combination of elements that is sufficient to amount
to significantly more than the judicial exception. It could not be clearer
from Alice, that under step two of the Mayo/Alice framework, the elements
of each claim are considered both individually and “as an ordered
combination” to determine whether the additional elements, i.e., the
elements other than the abstract idea itself, “transform the nature of the
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claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217
(internal quotations and citation omitted); 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) (internal citation omitted)). In other words, the inventive
concept under step two of the Mayo/Alice framework cannot be the abstract
idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); 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.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the claimed “logistics server” and the
“at least one processor” that performs the method steps, i.e., generic
computer components used to perform generic computer functions (Final
Act. 9) — a determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. ¶¶ 22–35).5

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
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Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether 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 generic
computer components to perform generic computer functions, e.g., receiving
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, 890 F.3d at 1373 (Moore, J., concurring)
(internal citations omitted); see also BSG Tech, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-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.”).

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 not 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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Finally, Appellant misapprehends the controlling precedent to the
extent Appellant maintains the claims are patent eligible because the claims
are allegedly novel and non-obvious in view of the prior art (Appeal Br. 26
(arguing that the claim elements, as a whole, present a specific,
unconventional method that is not known to the prior art)). Neither a finding
of novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’”
Alice Corp., 573 U.S. at 217–18 (citation omitted). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see
also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”).
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 2–20, which fall with
claim 1.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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