Pitney Bowers Inc.

Patent Trials and Appeals Board

Mar 25, 2021

2019004135 (P.T.A.B. Mar. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/946,847 11/20/2015 VLADIMIR GOLOS G-539-C1 7145
919 7590 03/25/2021
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
27 Waterview Drive
Shelton, CT 06484
EXAMINER
BOGACKI, MICHAL LAWRENCE
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR GOLOS and
CHARLES PASQUARIELLO
Appeal 2019-004135
Application 14/946,8471
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection of claims 1–18, which are all of the pending claims.
See Appeal Br. 3–4. We have jurisdiction under 35 U.S.C. § 6(b).

1 In a prior Decision (Appeal Number 2013-007439, decided September 22,
2015, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of
claims 1–18 under 35 U.S.C. § 102(b). Prior Dec. 7.
2 We use the word Appellant to refer to “Applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Pitney Bowes, Inc.
Appeal Br. 2.
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We AFFIRM.
A. INVENTION
According to Appellant, the invention relates to enhancing the service
based model of providing remote address cleansing. Spec. ¶ 4.

B. EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method of recognizing and verifying data formats of
received address lists for address cleansing, the method
comprising:
storing a plurality of address file hash values associated
with a plurality of known address data file profiles, the address
data file profiles including address data file formats and data field
structure;
receiving an uploaded address file;
identifying a received address data file profile of the
uploaded address file;
calculating a first hash value based on the identified
received address data file profile;
comparing the first hash value with the stored plurality of
address file hash values to determine whether the received
address data file has a known data format and structure; and
if the first hash value matches one of the stored plurality
of hash values, then associating the known address data profile
of the matching stored hash value with the uploaded address file;
if the first hash value does not match any of the stored
plurality of hash values, then preparing a new address file profile,
generating a new hash of the new profile, and storing the new
profile along with the associated new hash.

Appeal Br. 12 (Claims App.)
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C. PRIOR ART
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Name Reference Date
Haimowitz US 5,819,291 Oct. 6, 1998
Winslow US 2007/0214138 A1 Sept. 13, 2007

D. REJECTIONS ON APPEAL
Claims 1–18 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea), wherein the claims do not recite “any additional elements”
other those that are “well-known, routine and convention[al] in the art,” and
thus, “do not amount to significantly more” than the abstract idea itself.
Non-Final Act. 2–4.
Claims 1–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Winslow and Haimowitz. Non-Final Act. 5–10.
II. ANALYSIS
Rejection of claims 1–18 under 35 U.S.C. § 101
The Examiner rejects claims 1–18 under 35 U.S.C. § 101 as being
“directed to an abstract idea; and because the claim(s) as a whole,
considering all claim elements both individually and in combination, do not
amount to significantly more than an abstract idea.” Non-Final Act. 2.
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
Only if a 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:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP §
2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter.
Independent claim 1 recites a “method of recognizing and verifying
data formats of received address lists for address cleansing,” and
independent claim 10 recites a “computer system for recognizing and
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verifying data formats of received address lists for address cleansing.” We
conclude that claims 1 and 10, and the claims depending therefrom, fall
within the four statutory categories of patentable subject matter. In
particular, we conclude claim 1 falls within the process category and claim
10 falls within the machine category.
Therefore, the issue before us is whether the claims are directed to a
judicial exception without significantly more.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
According to the Examiner, the claims are directed to “the abstract
idea of comparing data and identifying a match.” Answer 4. In particular,
the Examiner concludes that the claims disclose “receiving data and
comparing the data to the existing data, or simply put, comparing two sets of
data,” wherein “[t]he compared data is either associated with the existing
data or if a match is not found, the data is stored as new data.” Id. The
Examiner concludes that “[t]his concept is similar to the abstract ideas
identified by the courts.” Id. (citing Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'l Ass’n, 776 F.3d 1343 (Fed.
Cir. 2014)).
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Independent claim 1 recites, in relevant part, “storing” hash values;
“receiving” a file; “identifying” a profile of the file; “calculating” a hash
value based on the profile; “comparing” the hash value with the stored hash
values; and “associating” the profile with the file or “preparing” a new
profile, “generating” a new hash, and “storing” the new profile with the new
hash. See claim 1. Independent claim 10 recites a “computer system” for
performing the steps similar to those in claim 1. See claim 10. We agree
with the Examiner that these claims, under their broadest reasonable
interpretation, recite “comparing data and identifying a match.” Answer 4.
In particular, claims 1 and 10 merely recite the steps (or a system for
performing the steps) of identifying, calculating, comparing, and associating
or preparing/generating various data, which are identified as example mental
processes in the Revised Guidance.3 See Revised Guidance, 84 Fed. Reg. at
52. That is, these steps of identifying, calculating, comparing, associating,
or preparing/generating data constitute mental steps because they involve
merely collecting, then making a mental observation of data and then
evaluating/judging the data, which can be carried out either in the human
mind (e.g., in the form of noting an observation) or with the aid of pencil
and paper. See Revised Guidance, 84 Fed. Reg. at 52 n.14; see also Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)

3 “Storing” and “receiving” are considered as insignificant extra-solution
activities the courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g) (e.g., data gathering, storing, sending). Cf. buySAFE v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
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(“[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.”). Acts that can be performed in the
human mind fall within the abstract idea exception subgrouping of mental
processes.
We, therefore, agree with the Examiner that claims 1 and 10, and the
claims depending respectively therefrom, recite “comparing data and
identifying a match” (Answer 4), i.e., an evaluation or judgment, which falls
within the mental processes category of abstract ideas identified in the
Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Appellant contends that “[t]he claims are directed to technology that
depends of computerized database structures,” wherein “[t]hese database
structures are not abstract ideas, but are rather particular implementations of
computer database technology.” Appeal Br. 4. Further, according to
Appellant, “the claimed ‘hashing’ function is another particular
technological component of the invention that is central to the invention.”
Id. We are not persuaded by Appellant’s arguments that such “particular
implementations of computer database technology” comprise additional
elements that integrate the judicial exception into a practical application.
As discussed above in Prong 1, the claims’ steps of “preparing” and
“generating” the various data/data structures involve merely making a
mental observation of data, which can be carried out either in the human
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mind or with the aid of pencil and paper, and the steps of “storing” and
“receiving” involve insignificant extra-solution activity. See Revised
Guidance, 84 Fed. Reg. at 52 n.14. Further, the claimed steps of
“identifying” data (profile of the file), “calculating” data (hash value based
on the profile), “comparing” data (the hash value with the stored hash
values), and “associating” data (the profile with the file) also constitute
making a mental observation of data and evaluating/judging the data, which
can also be carried out either in the human mind or with the aid of pencil and
paper.
Although Appellant contends that the “database structures” recited in
the claims “are not abstract ideas” (Appeal Br. 4), Appellant does not
identify any additional element(s) sufficient to integrate the abstract idea
into a patent-eligible practical application. That is, a “database structure” is
merely a container for data and, without significantly more, does not
integrate the abstract idea into a patent-eligible practical application.
Here, the steps in the claims comprise comparing a calculated hash
value with stored hash values, and then, if the hash value matches,
associating the profile with the file, but no further step is performed in
response to the association. See claims 1, 10. Similarly, if the hash value
does not match, the steps comprise of preparing a new profile, generating a
new hash, and storing the new profile along with the associated new hash,
but nothing is done to the newly stored profile and hash. Id. Hence, other
than the limitations directed to the abstract idea, discussed above, the
invention is claimed at a very high level of generality.
Accordingly, although Appellant contends “[t]he claims are directed
to technology that depends of computerized database structures” that “are
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rather particular implementations of computer database technology” (Appeal
Br. 4), we conclude that using generic database structures (e.g., claim 10
“database memory”) in association with the recited steps of
storing/receiving, identifying, calculating, comparing, associating, or
preparing/generating data does not provide additional elements that integrate
the abstract idea into a practical application.
Accordingly, we conclude independent claims 1 and 10, and claims 2–
9, and 11–18 depending respectively therefrom do not integrate the judicial
exception into a practical application.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the elements in the claims both individually and “as an ordered
combination” recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (quoting Mayo, 566 U.S. at 73).
We consider whether any additional limitations in claims 1 and 10
include an inventive concept. Although Appellant contends that “the
appealed claims are directed to computer processing inventions that are not
‘well-understood, routine and conventional’ in the prior art” (Appeal Br. 5),
the steps of storing/receiving, identifying, calculating, comparing,
associating, or preparing/generating data in claims 1 and 10 do not
individually or as an ordered combination define ways of storing or
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processing data that is different than any of the conventional ways in which
a computer stores or processes data, and thus do not provide an inventive
concept. See, e.g., buySAFE, 765 F.3d at 1355 (“That a computer receives
and sends the information over a network—with no further specification—is
not even arguably inventive.”). The focus of the claims is not on a
technological improvement in computer technology, but on certain
independently abstract ideas that use conventional computing functions. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (quotation marks and citations omitted). As with the ineligible
claimed invention in BSG, the claimed invention does not improve a
computer’s functionality or that of its associated components, but rather the
benefits flow from performing the abstract idea in conjunction with
conventional computer functionality. See BSG, 899 F.3d at 1288 (“While
the presentation of summary comparison usage information to users
improves the quality of the information added to the database, an
improvement [in] . . . the information stored by a database is not equivalent
to an improvement in the database’s functionality.”).
Although the Examiner does not expressly cite to Appellant’s
Specification or provide extrinsic evidence, we note that Appellant describes
the invention with respect to only a well-understood, routine, and
conventional processing system (see Spec. ¶¶ 12–15 describing the operation
of only a generic “processing system” and showing exemplary interfaces
therein). Additionally, Appellant provided no argument that the claimed
invention has additional elements which provide “significantly more” than
the abstract idea. Outside of the abstract idea, we find the claims merely
recite generic computer functions that are well-understood, routine, and
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conventional. Alice, 573 U.S. at 226. Accordingly, we agree with the
Examiner that the claims are patent-ineligible.
On this record, we agree with the Examiner that independent claims 1
and 10, and claims depending respectively therefrom and not specifically
argued separately, are directed to patent-ineligible subject matter.

Claims 1–18 rejected under 35 U.S.C. § 103 over Winslow and Haimowitz.
In deciding Appeal Number 2013-007439 (“Prior Dec.”), we affirmed
the Examiner’s rejections of claims 1–18 under 35 U.S.C. § 102(b) over
Winslow. See Prior Dec. 7. In particular, we agreed with the Examiner that
“Winslow discloses comparing the hash values for the selected address with
the recorded hash value associated with a companion file.” Id. We pointed
out that “claims 1 and 10 are silent regarding any determining of a ‘format’
of data, or any ‘type of additional intelligence’” that were argued by
Appellant. Id. at 5–6 (citing prior Appeal Br. 3–4).
In the present Appeal, independent claims 1 and 10 have been
amended to recite, inter alia, the comparing is performed “to determine
whether the received address data file has a known data format and
structure.” Claim 1. Independent claim 10 was similarly amended.
According to Appellant, the amendment to the claims “to expressly
incorporate the narrower limitations that Applicant argued for, but that were
not included in the broad interpretation that was applied.” Appeal Br. 2.
Appellant contends that “Winslow does not teach or suggest the type
of additional intelligence that is claimed in independent claims 1 and 10, and
that streamlines the process of identifying the format of address data being
provided for processing.” Appeal Br. 6. Instead, according to Appellant,
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“Winslow teaches that a hash can be examined to determine whether an
individual address record is ‘stale’ or ‘expired.’” Id. at 9. Although “the
Examiner has relied on descriptions in Haimowitz describing the use of a
‘hash key’ in connection with the missing features,” Appellant contends that
“the ‘hash key’ and its use, in Haimowitz is much different than the subject
matter of claims 1 and 10, and fails to correct the deficiencies of Winslow.”
Id.
We have considered all of Appellant’s arguments and evidence
presented. We agree with Appellant that the preponderance of the evidence
on this record does not support the Examiner’s legal conclusion that claims 1
and 10 would have been obvious over the combination of Winslow and
Haimowitz.
As the Examiner finds in the Final Rejection, Winslow does not
“distinctly disclose: comparing the first hash value with the stored plurality
of address file hash values to determine whether the received address data
file has a known data format and structure.” Non-Final Rej. 6. Although the
Examiner then relies on Haimowitz to teach and suggest the missing claimed
limitation, we are unable to find such teaching or suggestion in the cited
portions of Haimowitz. Id. (citing Haimowitz, 3:30–46. 4:60–67, 5:41–50,
6:11–22, claim 1, Fig. 3). We agree with Appellant that, in the portions of
Haimowitz relied on by the Examiner, “the ‘hash key’ is used to determine
whether a new address matches an address that is already in the system,”
wherein the “hash key” is “directed to the data records themselves, and not
to the ‘data format and structure’ that is the subject of the independent
claims.” Appeal Br. 9.
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Although the Examiner finds in the Answer that Winslow’s hash
values “are generated from the last two lines of the address record,” we are
unpersuaded that there is a clear showing that “[i]t can be reasonably argued
that the lines of the address records denote format/structure.” Answer 7
(citing Winslow ¶ 52). Furthermore, even assuming arguendo that such
hash values in Winslow “is also based on the format/structure” as the
Examiner finds (id.), the Examiner does not explain how such disclosure in
Winslow teaches or suggests the step of comparing such hash value with
stored values “to determine whether the received address data file has a
known data format and structure,” as recited required by the claims. See
claims 1, 10.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding the combination of Winslow and Haimowitz
teaches or suggests the contested limitations of Appellant’s claims 1 and 10.
Dependent claims 2–9, and 11–18 depend on claims 1 and 10 respectively,
and stand with their respective independent claims over the Examiner’s
obviousness rejection over Winslow and Haimowitz.
CONCLUSIONS
We affirm the Examiner’s rejection of claims 1–18 under 35 U.S.C.
§ 101.
However, we reverse the Examiner’s rejection of claims 1–18 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–18 103(a) Winslow, Haimowitz 1–18
Overall
Outcome:
1–18
TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED