Kenneth Thomas. Mcbride et al.Download PDFPatent Trials and Appeals BoardAug 2, 201913110476 - (D) (P.T.A.B. Aug. 2, 2019) 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. 13/110,476 05/18/2011 Kenneth Thomas McBride STAP.P0055US/1000087208 3543 29053 7590 08/02/2019 NORTON ROSE FULBRIGHT US LLP 2200 ROSS AVENUE SUITE 3600 DALLAS, TX 75201-7932 EXAMINER MERCHANT, SHAHID R ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH THOMAS McBRIDE and JOHN ROLAND CLEM ____________ Appeal 2017-0043481 Application 13/110,4762 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 78–80, 84–86, 90–92, 95, 96, 101, and 104–109. An oral hearing was held on February 14, 2019. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed July 8, 2016) and Reply Brief (“Reply Br.,” filed Jan. 17, 2017), the Examiner’s Answer (“Ans.,” mailed Nov. 17, 2016) and Final Office Action (“Final Act.,” mailed Mar. 10, 2016), and the Transcript of the hearing held on February 14, 2019 (“Tr.”). 2 Appellants identify Stamps.com Inc. as the real party in interest. App. Br. 2. Appeal 2017-004348 Application 13/110,476 2 We AFFIRM. CLAIMED INVENTION Appellants’ claimed invention “is directed to systems and methods which provide postage indicia using mobile communication handsets.” Spec. ¶ 8. Claims 78, 84, 90, and 109 are the independent claims on appeal. Claims 78, 90, and 109, reproduced below with bracketed notations added, are illustrative of the claimed subject matter: 78. A method of activating postage indicium data comprising: [(a)] capturing, by a mobile communications device, one or more images of a mail piece; [(b)] extracting, by the mobile communication device, information from the one or more images of the mail piece, wherein the information is extracted from human readable information included in the one or more images of the mail piece; [(c)] sending, by the mobile communication device, the information extracted from the one or more captured images to one or more remote processor; and [(d)] receiving, by the mobile communication device, confirmation that the postage indicium data has been activated, wherein the postage indicium data is activated based on at least some of the information extracted from the human readable information included in the one or more captured images; and [(e)] analyzing, by the mobile communications device, the one or more captured images to estimate a value for generating the activated postage indicium data. 90. A token activation system comprising: [(a)] one or more processor configure to: [(1)] create and store an unactivated postage indicium data; [(2)] associate the unactivated postage indicium data with a meter identification; Appeal 2017-004348 Application 13/110,476 3 [(3)] receive, from a user device, information extracted from one or more captured images of a mail piece, wherein the information includes information extracted from human readable information included in the one or more captured images of the mail piece, and wherein the mail piece includes a token associated with the unactivated postage indicium data, [(4)] based on at least some of the received information, activate said unactivated postage indicium data into activated postage indicium data; [(5)] transmit a confirmation to the user device, wherein the confirmation indicates that said unactivated postage indicium data has been activated into valid postage indicium for delivery of the mail piece, and wherein at least a portion of the confirmation is added to the token; and [(6)] charge a meter identified by the meter identification for the activation; and [(b)] memory in communication with said one or more processor. 109. A mobile communication device comprising: [(a)] one or more processor [sic] configured to: [(1)] capture an image of a mail piece, wherein the image includes address information associated with the mail piece; [(2)] generate a token from the image of the mail piece; and [(3)] transmit the token to a token activation system, [(i)] wherein the token activation system activates the token, and [(ii)] wherein activation of the token indicates that the token is valid postage indicium; and [(b)] a memory coupled to the one or more processor. Appeal 2017-004348 Application 13/110,476 4 REJECTIONS Claims 78–80, 84–86, 90–92, 95, 96, 101, and 104–109 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 78, 80, 84–86, 105, and 106 are rejected under 35 U.S.C. § 103(a) as unpatentable over Heiden (US 2011/0071944 A1, pub. Mar. 24, 2011), Burningham (US 2005/0080751 A1, pub. Apr. 14, 2005), and Leung (US 2004/0128264 A1, pub. July 1, 2004). Claims 90–92, 96, 107, and 108 are rejected under 35 U.S.C. § 103(a) as unpatentable over Heiden, Burningham, and Gullo (US 2004/0186811 A1, pub. Sept. 23, 2004). Claims 95, 101, and 104 are rejected under 35 U.S.C. § 103(a) as unpatentable over Heiden, Burningham, Gullo, and Sansone (US 2002/0143431 A1, pub. Oct. 3, 2002). Claim 109 is rejected under 35 U.S.C. § 103(a) as unpatentable over Heiden and Leung. ANALYSIS Patent-Ineligible Subject Matter 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 Appeal 2017-004348 Application 13/110,476 5 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. (citation omitted). 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). The USPTO recently published revised guidance on the application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework such that a claim will generally be considered directed to an abstract idea if (1) the claim recites subject matter falling within one of the following groupings of abstract ideas: (a) mathematical concepts; (b) certain methods of organizing human activity, e.g., a fundamental economic principle or practice, a commercial or legal 3 The Revised Guidance is effective as of January 7, 2019, and applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Appeal 2017-004348 Application 13/110,476 6 interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the claim does not integrate the abstract idea into a practical application, i.e., apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the clam is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). See Revised Guidance 54–55. The Revised Guidance references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h) 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. Id. 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. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we then look to whether the claim “[a]dds a specific limitation or combination of limitations” that is not “well-understood, routine, conventional activity in the field” or simply “appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception” (“Step 2B”). Id. at 56. With the legal principles outlined above, and the 2019 Revised Guidance in mind, we turn to the Examiner’s § 101 rejection. In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that the claims are directed to “processing postage for a mail delivery service,” which the Examiner characterized as a fundamental economic practice and, thus, an abstract idea. Final Act. 7. The Examiner Appeal 2017-004348 Application 13/110,476 7 further determined that the claims do not recite additional elements that are sufficient to amount to significantly more than the judicial exception. Id. at 7–9. Independent Claim 78 and Dependent Claims 79, 80, 101, and 105 Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance Appellants’ Specification describes that known processor-based systems facilitate ad-hoc generation and printing of postage indicia for a particular mail piece. Spec. ¶ 4. However, these systems require “relatively bulky printers” for imprinting the postage indicia upon an envelope or label. Id. However, some users do not use a sufficient amount of postage to justify the lease of a tranditional postage meter. Id. ¶ 5. Also, some users may not have needed supplies on hand, such as label stock and printer ink, and may be traveling away from the postage meter, processor-based postage system, and/or printer for generating and printing the postage indicia. Id. To overcome this problem, the Specification describes placing a token comprising substantially unique information derived from the mail piece itself. Id. ¶ 13. The unique information includes information handwritten on the mail piece by a user for use in activating postage indicia, such as account information for debiting a user’s account by a postage value amount. Id. A mobile communication handset photographs a portion of the mail piece and communicates the image and data derived from the image to an activation system to activate the portion as a token having an associated postage value. Id. The mobile communication handset and/or activation system calculates an appropriate amount of postage. Id. ¶ 14. The image of the mail piece is used by the mobile communication handset or the activation Appeal 2017-004348 Application 13/110,476 8 system to determine an appropriate amount of postage value for a postage indicium. Id. For example, a number of pages is determined from one or more images of the mailpiece and used to estimate an appropriate amount of postage. Id. ¶¶ 39, 62. Appellants’ claim 78 recites a method of activating postage indicium comprising the steps of: “capturing . . . one or more images of a mail piece” (limitation (a)); “extracting . . . information from the one or more images of the mail piece, wherein the information is extracted from human readable information included in the one or more images of the mail piece” (limitation (b)); “sending . . . the information extracted from the one or more captured images . . . .” (limitation (c)); “receiving . . . confirmation that the postage indicium data has been activated wherein the postage indicium data is activated based on at least some of the information extracted from the human readable information included in the one or more captured images” (limitation (d)); and “analyzing . . . the one or more captured images to estimate a value for generating the activated postage indicium data” (limitation (e)).” These limitations, when given their broadest reasonable interpretation, recite a method for activating a postage indicium, i.e., a commercial interaction, which is a certain method of organizing human activity, and, therefore, an abstract idea. See 2019 Revised Guidance 52. Appellants do not dispute that claim 78 recites an abstract idea. See App. Br. 6. Accordingly, we are not persuaded of Examiner error at Step 2A, Prong 1. Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Having concluded that claim 78 recites a judicial exception, i.e., an abstract idea, we next consider whether the claim recites additional elements Appeal 2017-004348 Application 13/110,476 9 that integrate the judicial exception into a practical application. Here, the additional elements recited in claim 78, beyond the abstract idea, include the claimed “mobile communication device” that performs the method steps (limitations (a)–(e)) and the “remote processor” to which the mobile communication device sends information extracted from one or more captured images (limitation (c)). These elements are described in the Specification at a high level of generality, i.e., as an assembly of generic computer components. See, e.g., Spec. ¶¶ 8, 25, 26. We find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited in claim 78 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 invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.4 4 The 2019 Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e)–(h) in Appeal 2017-004348 Application 13/110,476 10 Appellants argue that claim 78 is like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because it provides a solution necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks. Appeal Br. 7. Appellants argue that claim 78 overcomes a problem arising in conventional processor-based postage system in which a user cannot acquire postage indicia or postage indicia data without carrying a postage meter or computer- based postage indicia software and a suitable printer. Id. at 7–8. Specifically, Appellants point to limitation (e) as “allow[ing] a mobile device to estimate the value for generating activated postage indicium data, rather than requiring the user to carry a postage meter or other hardware device for estimating a value for postage indicium data.” Id. at 8. Yet, the claims in DDR Holdings “specify how interactions with the Internet are manipulated to yield a desired result –– a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” Id. Here, limitation (e) of claim 78 does not recite implementation details or any requirements for how the captured one or more images are analyzed for estimating a value for generating the activated postage indicium data. Instead, claim 78 provides functional, results- oriented limitations like others the courts have held to be directed to abstract ideas. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (“essentially result-focused, functional character of claim 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. Id. 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. Appeal 2017-004348 Application 13/110,476 11 language has been a frequent feature of claims held ineligible under § 101, especially in the area of using generic computer and network technology to carry out economic transactions”); Interval Licensing, 896 F.3d at 1345 (finding claim directed to “(non-interfering display of two information sets), without any limitation on how to produce that result” to be ineligible). Moreover, the Specification makes clear that the claimed analyzing requires no more than a process that could be performed by a human mentally or with paper and pen, i.e., a mental process, which is an abstract idea. For example, at paragraphs 39 and 62, the Specification describes determining, from the one or more images, a number of pages to estimate total weight of the mail item. Mental processes remain unpatentable even when performed by a computer, such as a mobile communications device. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). We are not persuaded that claim 78 recites a technological improvement, rather than an improvement to a business practice. We conclude, for the reasons outlined above, that claim 78 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim are no more than generic computer components used to implement the abstract idea. Therefore, the additional elements do not integrate the recited 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 Appeal 2017-004348 Application 13/110,476 12 effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 78 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 78 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 78 adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field, or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Appellants argue that the Examiner has not cited any prior art or provided reasoning to demonstrate that the claim limitations, considered individually and as an ordered combination, were well-understood, routine, and conventional activities. App. Br. 10. Yet, 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 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 Appeal 2017-004348 Application 13/110,476 13 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 test 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). Here, claim 78 additionally recites a “mobile communication device” and “remote processor” for executing the abstract idea. The Specification describes these components as generic computer components for performing generic computer functions. See, e.g., Spec. ¶¶ 8, 25, 26. Appellants cannot reasonably contend, nor do they, that there is a genuine issue of material fact regarding whether operation of the claimed mobile communication device or remote processor is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 78 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., capturing, extracting, sending, receiving, and analyzing information. Indeed, the Federal Circuit, in accordance with Appeal 2017-004348 Application 13/110,476 14 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 v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“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.”). We are not persuaded, on the present record, that the Examiner erred in rejecting claim 78 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 78, and dependent claims 79, 80, 101, and 105 which are not argued separately. Independent Claim 84 and Dependent Claims 85, 86, 104, and 106 Appellants’ arguments with respect to independent claim 84 are substantially similar to Appellants’ arguments with respect to claim 78, and are similarly unpersuasive of Examiner error. App. Br. 8–9. Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claim 84 for substantially the same reasons set forth above with respect to claim 78. We also sustain the rejection of dependent claims 79, 80, 101, and 105, which are not argued separately. Appeal 2017-004348 Application 13/110,476 15 Independent Claim 90 and Dependent Claims 92, 95, 96, 107, and 108 Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance Appellants’ claim 90 recites “creat[ing] and stor[ing] an unactivated postage indicium data” (limitation (a)(1)); “associat[ing] the unactivated postage indicium data with a meter identification” (limitation (a)(2)); “receiv[ing] . . . information extracted from one or more captured images of a mail piece, wherein the information includes information extracted from human readable information included in the one or more captured images of the mail piece, and wherein the mail piece includes a token associated with the unactivated postage indicium data” (limitation (a)(3)); “based on at least some of the received information, activat[ing] said unactivated postage indicium data into activated postage indicium data” (limitation (a)(4)); “transmit[ing] a confirmation . . . , wherein the confirmation indicates that said unactivated postage indicium data has been activated into valid postage indicium for delivery of the mail piece, and wherein at least a portion of the confirmation is added to the token” (limitation (a)(5)); and “charg[ing] . . . for the activation” (limitation (a)(6)). These limitations, when given their broadest reasonable interpretation, recite steps for generating and activating a postage indicium that result in charging for the activation, i.e., a commercial interaction, which is a certain method of organizing human activity, and, therefore, an abstract idea. See 2019 Revised Guidance 52. Appellants do not dispute that claim 90 recites an abstract idea. See App. Br. 6. Accordingly, we are not persuaded of Examiner error at Step 2A, Prong 1. Appeal 2017-004348 Application 13/110,476 16 Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Having concluded that claim 90 recites a judicial exception, i.e., an abstract idea, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Here, the additional elements recited in claim 90, beyond the abstract idea, include the claimed “one or more processor” (limitation (a)), “memory in communication with said one or more processor” (limitation (b)), “user device (limitations (a)(3) and (a)(5)), and “meter” (limitation (a)(6)). We find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited in claim 90 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 invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance. At most, the additional elements appear generally link the use of the abstract idea to a particular Appeal 2017-004348 Application 13/110,476 17 technological environment or field of use, and/or constitute insignificant extra-solution activity to the abstract idea. Revised Guidance 55. Appellants argue that claim 90 is like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because it provides a solution necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks. Appeal Br. 7. Appellants argue that limitations claim 90 overcomes a problem related to fraud or abuse of tokens. Id. at 9 (citing Spec. ¶ 50). Specifically, Appellants point to limitations (a)(3) and (a)(5) as adding at least a portion of confirmation to the token, thereby enabling fraud or abuse of tokens to be detected more easily. Id. Yet, Appellants’ Specification describes at paragraph 50 that the activation system stores a unique code identifying each token in a database along with a status identifier indicating whether the tokens are unactivated or activated. Contrary to indicating that the status indicator provides a solution to a problem rooted in computer technology to overcome a problem specifically arising in the realm of computer networks, the Specification provides that the status identifiers “may be useful with the validation of the indicia.” The Specification further describes that additional or alternative information may be stored in association with tokens, such as a business requesting the tokens or a service provider generating the tokens, crytopgraphic keys for encrypting or decrypting the tokens, digital signatures used to authenticate the tokens, information regarding geographic areas the mail items are introduced or are delivered to, particular services and/or levels of service, and/or the like. Spec. ¶ 50. The paragraph concludes that Appeal 2017-004348 Application 13/110,476 18 [s]uch additional information may be used in an audit trail with respect to any particular token or indicium created in association therewith, used to detect fraud or abuse of tokens and indicia created in association therewith, used for accounting purposes, used to restrict or manage the use of tokens or indicia created in association therewith, etc. Id. Stated differently, the Specification does not describe any particular problem, much less one rooted in computer networks, addressed by storing the status identifiers in association with the tokens. Also, no particular implementation details to any particular problem is described. Rather than indicating a technological invention, these limitations are similar to concepts of collecting data, analyzing data, and reporting the results of the collection and analyzing, including when limited to particular content, that the Federal Circuit has held to be abstract. See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)). Appeal 2017-004348 Application 13/110,476 19 We conclude that claim 90 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim are no more than generic computer components used to implement the abstract idea in a particular technological environment and/or constitute insignificant extra-solution activity to the abstract idea. Therefore, the additional elements do not integrate the recited abstract idea into a practical application, and we agree with the Examiner that claim 90 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Turning to the second step of the Mayo/Alice framework, Appellants argue that the Examiner has not cited any prior art or provided reasoning to demonstrate that the claim limitations, considered individually and as an ordered combination, were well-understood, routine, and conventional activities. App. Br. 10. Yet, the only limitations recited in claim 90 that are not part of the abstract idea itself are the one or more processor, memory, user device, and meter, which are described as generic computer components for performing generic computer functions. See, e.g., Spec. ¶¶ 26, 34, 67. For reasons similar to those described above with respect to independent claim 78, we are not persuaded that the Examiner erred in the step two analysis of the Mayo/Alice framework. We are not persuaded, on the present record, that the Examiner erred in rejecting claim 90 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 90, and dependent claims 91, 92, 95, 96, 107, and 108, which are not argued separately. Appeal 2017-004348 Application 13/110,476 20 Independent Claim 109 Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance Limitations (a)(1)–(a)(3) of claim 109, when given their broadest reasonable interpretation, recite steps for generating and transmitting a postage indicium, i.e., a commercial interaction, which is a certain method of organizing human activity, and, therefore, an abstract idea. See 2019 Revised Guidance 52. Appellants do not dispute that claim 109 recites an abstract idea. See App. Br. 6. Accordingly, we are not persuaded of Examiner error at Step 2A, Prong 1. Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Appellants argue that claim 109 is like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because it provides a solution necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks. Appeal Br. 7. Specifically, Appellants assert that claim 109 “eliminates the need for a user to carry specialized hardware or software dedicated to printing postage indicia, such as a postage meter, and eliminates the need to carry shipping labels and the like.” Id. at 9. “Instead, a user can utilize a mobile communication device . . . to capture an image of a mailpiece, where the mobile device generates a token from the image of the mail piece, and the token is then activated as a valid postage indicium.” Id. We find this argument unpersuasive for reasons similar to those described with respect to the other independent claims. Notably, limitations (a)(1) through (a)(3) are expressed purely in terms of the results desired, and devoid of the technological implementation details for achieving the desired Appeal 2017-004348 Application 13/110,476 21 result. We find no parallel between claim 109 and the claims at issue in either DDR Holdings. The only additional elements recited in claim 109, beyond the abstract idea, include the claimed “one or more processor” and “memory” of the mobile communication device, and these are described in the Specification at a high level. Spec. ¶ 34. We find nothing in the Speciication indicating that these additional elements are other than generic components of a mobile communication device. We find nothing attributing an improvement in technology and/or a technical field to the additional elements or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance. At most, the additional elements appear generally link the use of the abstract idea to a particular technological environment, and/or constitute insignificant extra-solution activity to the abstract idea. Revised Guidance 55. Therefore, the additional elements do not integrate the recited abstract idea into a practical application, and we agree with the Examiner that claim 109 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Turning to the second step of the Mayo/Alice framework, Appellants argue that the Examiner has not cited any prior art or provided reasoning to demonstrate that the claim limitations, considered individually and as an ordered combination, were well-understood, routine, and conventional activities. App. Br. 10. Yet, the only limitations recited in claim 109 that are not part of the abstract idea itself are the one or more processor and memory of the mobile communication device, which are described as Appeal 2017-004348 Application 13/110,476 22 generic computer components of the mobile communication device for performing generic computer functions. See, e.g., Spec. ¶ 34. Therefore, we are not persuaded that the Examiner erred in determining that the additional elements recited in claim 109, considered alone and as an ordered combination, do not amount to significantly more than the abstract idea. We are not persuaded, on the present record, that the Examiner erred in rejecting claim 109 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 109. Obviousness Independent Claims 78 and 84 and Dependent Claims 79, 80, 85, 86, 105, and 106 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claims 78 and 84 under 35 U.S.C. § 103(a) because Heiden does not disclose or suggest “analyzing, by the mobile communications device, the one or more captured images to estimate a value for generating the activated postage indicium data,” as recited in claim 78, limitation (e), and similarly recited by claim 84. App. Br. 11–12; see also Reply Br. 5. The Examiner relies on paragraphs 3, 6, 8, and 25 of Heiden as disclosing the argued limitation. Yet, we find nothing in the cited portions to teach or suggest a mobile communications device analyzes a captured image to estimate a value for generating the active postage indicium, as required by claim 78. Heiden relates to dispensing and providing postage for a mailpiece sent via a virtual postage system that does not require a printer to print evidence of the postage payment. Heiden ¶¶ 1, 5. Virtual postage meters typically derive a secret code or “token” based on information particular to Appeal 2017-004348 Application 13/110,476 23 the mailpiece, such as postage amount, date, and recipient address information. Id. The token is embedded into the postal indicium for later use by a postal authority to verify integrity of the postal indicium. Id. The postal indicium includes an encrypted barcode printed on the mailpiece itself or a label applied to the mailpiece. Id. ¶¶ 3–4. However, a printer may not be readily available. Id. ¶ 4. To solve this problem, Heiden discloses a method of dispensing evidence of postage payment that includes providing a preprinted barcode, to associate with a mailpiece to a customer. Id. ¶ 6. The barcode has a first identifier to a customer, and the customer has a customer identifier. Id. Heiden’s method includes receiving the first information from a mobile electronic device associated with the customer. Id. The first information includes mailpiece information, which includes the postage amount. Id. The postage amount, which is based on the mailpiece information, is deducted from a postage account associated with the customer identifier. Id. In another environment the first identifier is transmitted from the mobile device to a provider. Id. ¶ 8. That embodiment also includes a postage amount in mailpiece information for the first information. Id. The portions of Heiden cited by the Examiner describe that the first information with a postage amount is received from a mobile device. But the cited portions do not describe the mobile device analyzing captured images to estimate a value for generating the activated postage indicium data, as required by claims 78 and 84. To the contrary, as pointed out by Appellants (App. Br. 12), Heiden at paragraph 26 describes that the postal application captures an image of the preprinted barcode, sends the identifier and customer identifier to a data center, and the data center charges the Appeal 2017-004348 Application 13/110,476 24 customer account associated with the customer identifier for activating the mailing label. The association between the customer identifier and the mailing information having the postage amount is made either by the user entering the amount of postage needed or the postage application determining the amount of postage needed using mailpiece information entered by the user. Id. ¶ 25. Stated differently, Heiden does not disclose estimating a value by analyzing one or more captured images of a mailpiece, as required by independent claims 78 and 84, but rather describes determining a value from information about the mailpiece entered by the user. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claims 78 and 84, and dependent claims 79, 80, 85, 86, 105, and 106 under 35 U.S.C. § 103(a). Independent Claim 90 and Dependent Claims 91, 92, 96, 107, and 108 We are persuaded that the Examiner erred in rejecting independent claim 90 under 35 U.S.C. § 103(a) because the Examiner has not adequately established that the combination of Heiden, Burmingham, and Gullo discloses or suggests “transmit a confirmation to the user device, wherein the confirmation indicates that said unactivated postage indicum data has been activated into a valid postage indicum for delivery of the mail piece, and wherein at least a portion of the confirmation is added to the token,” as recited in claim 90, limitation (a)(ii)(5). See Tr. 8–9; see also App. Br. 15–16. The Examiner finds that Heiden teaches transmitting a confirmation to the user device (Final Act. 22 (citing Heiden, Abstract, paragraphs 26–27, Fig. 4, step 115), and adding a portion of a confirmation to the token. See Final Act. 22 (citing Heiden, Abstract, Fig. 3, block 85). The Examiner also Appeal 2017-004348 Application 13/110,476 25 determines that it would have been obvious to a person of ordinary skill in the art at the time of the invention to mark the token of Heiden “to provide confirmation or authentication of the token.” Id. at 23. Heiden describes a method of dispensing evidence of postage payment includes: (1) receiving first information (including a first identifier, a customer identifier, and a postage amount) from a mobile device associated with a customer; (2) deducting the postage amount from a postage account associated with the customer identifier; and (3) transmitting the first identifier and verification of payment for postage to a carrier. Heiden, Abstract; see id. ¶ 27 (describing sending verification of payment to the carrier data center). With reference to Figure 3, step 85, Heiden describes a method of dispensing and provident postage that concludes with applying an activated, pre-printed barcode to a mailpiece and placing the mailpiece in the mail stream with the carrier. Id. ¶ 26. Heiden, thus, teaches providing verification of payment to a carrier. But Heiden does not teach or suggest transmitting a confirmation to the user device that an unactivated postage indicium data has been activated, much less adding a portion of the confirmation to the token. It is unclear, and the Examiner does not adequately explain, why one of ordinary skill in the art would be motivated to modify Heiden such that the user device would receive a confirmation that the postage has been activated and the user would add a portion of such confirmation to the token in response to receiving such a confirmation. The Examiner suggests that the modification somehow would “provide confirmation or authentication,” but Heiden’s carrier receives verification of payment of postage associated with a Appeal 2017-004348 Application 13/110,476 26 preprinted barcode for a particular mailpiece. There is no apparent benefit in the proposed modification. Because the Examiner has not established a prima facie case of obviousness, we do not sustain the Examiner’s rejection of claim 90 and dependent claims 91, 92, 96, 107, and 108 under 35 U.S.C. § 103(a). Dependent Claims 95, 101, and 104 The Examiner’s rejection of dependent claims 95, 101, and 104 under 35 U.S.C. § 103(a) does not cure the deficiencies in the rejection of independent claims 78, 84, and 90. See Final Act. 25–27. Therefore, we do not sustain the rejection of claims 95, 101, and 104 for the same reasons provided above with respect to the independent claims. Independent Claim 109 and Dependent Claims 24, 25, and 28 As an initial matter, claim 109 recites a mobile communication device claim comprising one or more processors and a memory couple to the one or more processor. Limitations (a)(3)(i) and (a)(3)(ii) of claim 109 recite actions performed by a token activaction system, not actions performed by the one or more processor of the claimed mobile communication device. Accordingly, these limitations do not limit the scope of the mobile communication device claim. Therefore, Appellants’ arguments that neither Heiden nor Leung teaches the claimed activation of the token, as required by limitations (a)(3)(i) and (a)(3)(ii), are unpersuasive of Examiner error. Appellants additionally argue that Heiden does not disclose or suggest that a mobile communication device generates a token from an image of a mail piece. App. Br. 17. The Examiner relies on Heiden for this limitation. Final Act. 28 (citing Heiden ¶¶ 3, 6, 8, 25). We have reviewed the cited portions of Heiden, and we agree with Appellants that Heiden does not Appeal 2017-004348 Application 13/110,476 27 describe a mobile communication device that generates a token from an image of a mailpiece. Instead, Heiden describes that a mobile electronic device captures and transmits information from a pre-printed barcode relating to a mailpiece, and also receives information relating to the mailpiece from a customer. See, e.g., Heiden ¶¶ 6–8, 26. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claim 6 and dependent claims 24, 25, and 28 for the same reasons set forth above with respect to claim 1. DECISION The Examiner’s rejection of claims 78–80, 84–86, 90–92, 95, 96, 101, and 104–109 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejections of claims 78–80, 84–86, 90–92, 95, 96, 101, and 104–109 under 35 U.S.C. § 103(a) are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation