Ex Parte SundelDownload PDFPatent Trial and Appeal BoardNov 29, 201613453971 (P.T.A.B. Nov. 29, 2016) 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. 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; 2 Appeal 2014-008401 Application 13/453,971 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? 3 Appeal 2014-008401 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), 4 Appeal 2014-008401 Application 13/453,971 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. 5 Appeal 2014-008401 Application 13/453,971 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). 6 Appeal 2014-008401 Application 13/453,971 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. 7 Appeal 2014-008401 Application 13/453,971 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 8 Appeal 2014-008401 Application 13/453,971 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. 9 Appeal 2014-008401 Application 13/453,971 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 10 Appeal 2014-008401 Application 13/453,971 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) 11 Copy with citationCopy as parenthetical citation