Pitney Bowers Inc.Download PDFPatent Trials and Appeals BoardMar 25, 20212019004135 (P.T.A.B. Mar. 25, 2021) 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. 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. Appeal 2019-004135 Application 14/946,847 2 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.) Appeal 2019-004135 Application 14/946,847 3 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 Appeal 2019-004135 Application 14/946,847 4 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). Appeal 2019-004135 Application 14/946,847 5 “[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 Appeal 2019-004135 Application 14/946,847 6 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)). Appeal 2019-004135 Application 14/946,847 7 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.”). Appeal 2019-004135 Application 14/946,847 8 (“[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 Appeal 2019-004135 Application 14/946,847 9 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 Appeal 2019-004135 Application 14/946,847 10 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 Appeal 2019-004135 Application 14/946,847 11 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 Appeal 2019-004135 Application 14/946,847 12 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, Appeal 2019-004135 Application 14/946,847 13 “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. Appeal 2019-004135 Application 14/946,847 14 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. Appeal 2019-004135 Application 14/946,847 15 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 Copy with citationCopy as parenthetical citation