Kenneth Thomas. Mcbride et al.

Patent Trials and Appeals Board

Aug 2, 2019

13110476 - (D) (P.T.A.B. Aug. 2, 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.
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.
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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;
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[(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.

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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
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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.
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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
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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
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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
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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
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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.
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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
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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
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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
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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.
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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.
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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
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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
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[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)).
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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.
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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
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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
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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
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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
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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
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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
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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
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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