Ex Parte Sundel

Patent Trial and Appeal Board

Nov 29, 2016

13453971 (P.T.A.B. Nov. 29, 2016)

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.
13/453,971 04/23/2012 Michael B. Sundel 002250-002 US DIV 9114
95628 7590
The Villamar Firm PLLC
3424 Washington Drive
Falls Church, VA 22041
12/01/2016 EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
crvillamar @ villamars .com
be villamar @ villamars .com
baravenwood @ villamars. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL B. SUNDEL
Appeal 2014-008401
Application 13/453,9711
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
An oral hearing was held on Nov. 8, 2016.
STATEMENT OF THE CASE
Michael B. Sundel (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 18—32. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies Worldpak, Inc., as the real party in interest.
Appeal Br. 2.
Appeal 2014-008401
Application 13/453,971
THE INVENTION
Claim 18, reproduced below, is illustrative of the subject matter on
appeal.
18. A tangible, non-transitory computer readable medium for
processing shipment and return of a package containing items from a
Sender to a Recipient, and comprising one or more computer readable
instructions configured to cause one or more computer processors to
perform the steps of:
storing in a database package data, for the package, and
including item data, for the items in the package, before shipment
occurs;
retrieving with a shipping mechanism coupled to the database
shipment tracking data, for tracking shipment of the package from the
Sender to the Recipient and return of one or more items of the items
of the package from the Recipient to the Sender;
adding with a computer processor coupled to the database and
the shipping mechanism the shipment tracking data to the database;
correlating with the computer processor the package data in the
database with the shipment tracking data for the package;
determining with the computer processor whether the package
requires customs clearance and, if so, generating with the computer
processor appropriate customs documentation or data transmissions to
a customs broker;
querying by an authorized user the database with the computer
processor for processing the shipment of the package from the Sender
to the Recipient and the return from the Recipient to the Sender of the
one or more items of the items of the package;
rendering data with the computer processor for display to an
authorized user, based on a query of the database for shipping
parameters of the package from the Sender to the Recipient and return
from the Recipient to the Sender of the one more items of the items of
the package;
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adding with the computer processor returned item information
to the database if items from the package are returned to the Sender;
in the case of international shipments, preparing with the
computer processor duty and tax refund claims based on the returned
item information and the corresponding item data; and
adding with the computer processor duty and tax refund
information to the database.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 18—32 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 18—32 are rejected under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
ISSUE
Did the Examiner err in rejecting claims 18—32 under 35 U.S.C. §112,
first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 18—32 are rejected under
35 U.S.C. §112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention?
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Application 13/453,971
ANALYSIS
The rejection of claims 18—32 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
The Examiner’s position is that the Specification fails to provide
adequate written descriptive support for the claim phrase “tangible, non-
transitory computer readable medium” (claim 18). See Final Rej. 3—5.
The Appellant concedes that said claim phrase “is not explicitly
recited in the present application.” Appeal Br. 4. But, according to the
Appellant, “one skilled in the art would have no trouble whatsoever
understanding that software or a computer program, as specifically recited,
would have to be stored in a memory or a computer readable device.”
Appeal. Br. 6 —7. Accordingly, there is no dispute that the Specification
does not expressly disclose the claim phrase “tangible, non-transitory
computer readable medium” (claim 18).
However, the Specification need not recite the same terms as used in
the claims. See Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995).
“[T]he prior application need not describe the claimed subject matter in
exactly the same terms as used in the claims . . . .” The question is whether
a “tangible, non-transitory computer readable medium” (claim 18) is
inherently disclosed. See Turbo Care Div. of Demag Delaval
Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118—20 (Fed. Cir.
2001).
In that regard, the Appellant directs attention to various Figures and
passages in the Specification where, for example, “a database is used to store
(see, e.g., paragraphs [0016], [0019], [0034], and [0039] of the specification)
and read data (see, e.g., paragraphs [0025], and [0029] of the specification),
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including a computer running software that can read data from the database
and accomplish the other functionality described in the specification (see,
e.g., paragraph [0025] of the specification).” Appeal Br. 6. The Appellant
thereby presented facts to support the argument that the Specification
inherently discloses a “tangible, non-transitory computer readable medium”
(claim 18). See Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985) (compliance with the written description requirement
is a question of fact).
Turning to the Examiner’s response, we do not see the facts the
Appellant raises having been addressed in an attempt to assess whether
Specification necessarily discloses a “tangible, non-transitory computer
readable medium” (claim 18). See Ans. 10-11. Rather the Examiner “would
like to note that a tangible, non-transitory computer readable medium for
processing shipment and return of a package containing items from a Sender
to a Recipient, and comprising one or more computer readable instructions
cannot be configured to cause one or more computer processors to
perform all the steps listed in the claim.” Ans. 10 (emphasis original). But
that is a question of enablement, not written description. The “‘written
description’ requirement is distinct from the enablement requirement.”
Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 n.17 (Fed.
Cir. 2005). Given no other argument or opposing facts, the facts weigh in
favor of the Appellant’s position. For that reason, the rejection is not
sustained.
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The rejection of claims 18—32 under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
The Examiner argues that “[t]he scope of the claim is indefinite
because the Specification, as originally filed, fails to disclose any algorithms
to adequately describe sufficient corresponding structure for performing the
functions recited in claim 18.” Final Act. 7.
The difficulty with this reasoning is that there is insufficient evidence
that the steps as claimed require anything more than a general purpose
computer. In fact, the evidence weighs in favor of the opposite conclusion.
For example, the Appellant relies on Fig. 2 as evidence that the
Specification provides “flow charts (e.g., algorithms) detailing the functions
of claims 18—32 ....” However, Figure 2 does no more than depict boxes
with words inside them reciting certain assigning steps. Notwithstanding
that claim 18 is not specifically directed to assigning, in citing to Figure 2
the Appellant means to suggest that no particular algorithm is necessary to
accomplish the steps recited in the depicted boxes. The Specification
indicates as much:
The processor is preferably a programmable computer running
software that can read data from database 600 and accomplish the
other functionality described herein. However, the processor can be
any logic device for accomplishing functionality similar to that
described herein.
Specification para. 25.
Also, to practice the claimed subject matter a database is necessary.
But the Specification discloses that a common database can be used (see
Specification para. 20).
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Thus, the steps as claimed are reasonably broadly construed as
achievable by a general purpose computer without special programming.
Cf. In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011). Accordingly, the Examiner has made a case for the
breadth of claim 18. However, a case for indefiniteness has not been made
out in the first instance. The claims particularly point out and distinctly
claim the invention, that is, one which is achievable by a general purpose
computer without special programming. The claim phrases “computer
processor” and “data base” are indeed immense in scope. “However,
‘Breadth is not indefiniteness.’” In re Robins, 429 F.2d 452, 458 (CCPA
1970)(citations omitted). Cf. In re Goffe, 526 F.2d 1393, 1398 (CCPA
1975) (“The mere fact that the claims cover a large number of possible
process steps and imaging member materials does not in and of itself make
the claims indefinite.”)
For the foregoing reasons, the rejection is not sustained.
NEW GROUND OF REJECTION
Claims 18—32 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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Taking claim 18 as representative of the claims on appeal, the claimed
subject matter is directed to information processing. Information processing
is a fundamental building block of human ingenuity. As such it is an
abstract idea.
Step two 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. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of information gathering into an inventive concept.
The method of claim 18 sets out ten steps by which various types of
information are processed: that is, (1) package data is stored; (2) shipment
tracking data is retrieved and (3) added; (4) the package data and shipment
tracking data are correlated; (5) customs clearance is determined;
(6) information about processing and return is queried; (7) data are rendered;
(8) return item information is added; (9) duty and tax refund claims (for
international shipments) are prepared; and, (10) duty and tax refund
information are added.
These storing, retrieving, adding, correlating, determining, querying,
and preparing steps are known operations for processing information and
thus add little to patentably transform the information processing abstract
idea. Furthermore, each of these steps is itself an abstract idea. Combining
abstract ideas per se does not render the combination any less abstract.
Although these steps do have a particular focus in that certain types of
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information are being processed, this does no more than give said steps a
contextual application. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [Parker v. Flook, 437 U.S.
584 (1978)] rejected the notion that the recitation of a practical application
for the calculation could alone make the invention patentable.”).
Finally, we note that claim 18 calls for using a database and a
computer processor. But, as we have discussed, any common databases and
general-purpose computer available at the time the application was filed
would have satisfied these limitations. The Specification supports that view.
“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. Stating an abstract
idea “while adding the words ‘apply if” is not enough for patent eligibility.”
Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 18 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The dependent claims describe various information processing schemes and
type of information to be processed which do little to patentably transform
the abstract idea.
Therefore, we enter a new ground of rejection of claims 18—32 under
35U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under §101.
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CONCLUSIONS
The rejection of claims 18—32 under 35U.S.C. §112, first paragraph,
as failing to comply with the written description requirement is reversed.
The rejection of claims 18—32 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
reversed.
Claims 18—32 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 18—32 is reversed.
Claims 18—32 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
REVERSED; 37 C.F.R, $ 41.50(b)
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