STREMSDOERFER, Mathieu et al.

Patent Trials and Appeals Board

Jul 9, 2020

14407864 - (D) (P.T.A.B. Jul. 9, 2020)

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.
14/407,864 12/12/2014 Mathieu Stremsdoerfer MCG133US-B 6455
83942 7590 07/09/2020
Levy & Grandinetti
P.O. Box 18385
Washington, DC 20036
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
07/09/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATHIEU STREMSDOERFER and PHILIPPE HOFFMANN
________________

Appeal 2019-006660
Application 14/407,864
Technology Center 3600
________________

Before JASON V. MORGAN, GREGG I. ANDERSON, and
JOHN F. HORVATH, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 8–11, 16, 17, 21, and 22, which
constitute all the claims pending in this application. Claims 2–5, 7, 12–15,
and 18–20 have been cancelled. Appellant’s claimed subject matter relates to
the subject matter considered in appeal number 2019-001715 (decided Feb.
26, 2020), in application number 13/524,880 (abandoned June 11, 2020). We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.
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Summary of the disclosure
The claimed subject matter relates to renting an article by:
(1) receiving requests from potential lessees to rent the article; (2) agreeing
to rent the article to the lessees; (3) transferring sequentially the article
between lessees according to a chronology of requested rental periods;
(4) monitoring the rental and transfers; and (5) distributing payments.
Abstract.
Representative claim (key limitations emphasized)
1. A method for renting portable property comprising:
entering on a processor and storage system via an information
network identification of an article of portable property for rent,
the identification of the article includes
(i) a location of the article,
(ii) a rental value for the article, and
(iii) a fixed or limited rental duration;
receiving a plurality of requests via the information network
from potential lessees to rent the article for requested rental
periods, the requests by potential lessees include competitive
bidding to purchase the article;
sorting by the processor and storage system the requests to rent
the article according to a chronology of the requested rental
periods, the sorting of the requests to rent denies requests for
rental periods that begin during a pending rental period;
agreeing via the information network to rent the article to a
plurality of lessees according to the chronology of the requested
rental periods, the agreeing to rent the article includes selecting
acceptable bids submitted by potential lessees of the article
through the processor and storage device based upon
predetermined criteria, the predetermined criteria for selecting
acceptable bids submitted by potential lessees of the article
through the processor and storage device includes denying bids
for failure of the potential lessees to submit an agreement to a
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minimum rental value, a minimum rental period, or a required
deposit;
transferring possession of the article from a lessor to a first
lessee, the first lessee being first in the chronology of the sorted,
requested rental periods;
transferring sequentially the article between lessees according
to the chronology of the sorted, requested rental periods;
monitoring for the lessor by the processor and storage system
each rental and transfer of the article, the monitoring by the
processor and storage system includes tracking geographically
a location of the article, the tracking geographically a location
of the article is by an RFID attached to the article; and
distributing by the processor and storage system a payment for
each rental of the article.
The Examiner’s rejections and cited references
The Examiner rejects claims 1, 6, 8–11, 16, 17, 21, and 22 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
3–18.
The Examiner rejects claims 1, 6, 8–11, 16, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Foth et al. (US 2008/0040208 A1;
published Feb. 14, 2008) (“Foth”), Snapp et al. (US 2003/0233246 A1;
published Dec. 18, 2003) (“Snapp”), Morgal et al. (US 2010/0228405 A1;
published Sept. 9, 2010) (“Morgal”), and Antony et al. (US 7,617,133 B1;
issued Nov. 10, 2009) (“Antony”). Final Act. 18–30.
The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Foth, Snapp, Morgal, Antony, and Yoon (US
8,682,804 B1; issued Mar. 25, 2014). Final Act. 30–31.
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35 U.S.C. § 101
Principles of law
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part framework: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.
Last year, the U.S. Patent and Trademark Office (USPTO) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct. 2019
Update”). 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
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of organizing human activity such as a fundamental economic
practice, or mental processes) (see 2019 Revised Guidance, 84
Fed. Reg. at 54 (step 2A, prong one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
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 is 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 2019 Revised Guidance, 84 Fed. Reg. at 56.
Step 2A, prong one
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner determines
claim 1 recites “a method that allows for users to rent portable property,
which is a method of commercial or legal interactions or managing
interactions between people.” Ans. 5; see also Final Act. 4 (“the claimed
invention is directed to one or more of: (i) a fundamental economic
practice, (ii) a method of organizing human activity, [or] (iii) an idea of
itself”). Appellant objects to the Examiner’s characterization of the
recitations of claim 1. Appeal Br. 12. But Appellant’s argument that claim 1
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recites “process or system steps as well as particular machines” (id.) is
directed to prong two, not prong one, of step 2A of the analysis.
Furthermore, the Examiner’s determinations accord with the
recitations of claim 1. In particular, claim 1 recites: (1) “receiving a plurality
of requests . . . from potential lessees to rent the article for requested rental
periods”; (2) “qualifying potential lessees based upon criteria predetermined
by the owner of the article”; (3) “agreeing . . . to rent the article to a plurality
of lessees according to the chronology of the requested rental periods”; (4)
“transferring possession of the article from a lessor to a first lessee”; (5)
“transferring sequentially the article between lessees according to the
chronology of the sorted, requested rental periods”; (6) “monitoring . . . each
rental and transfer of the article”; and (7) “distributing . . . a payment for
each rental of the article.” Thus, claim 1 recites steps taken to organize
transfers of an article for rent—first from a lessor to a lessee and then among
a sequence of lessees—according to agreements to rent the article for
consideration.
These steps represent certain methods of organizing human activity in
the form of commercial or legal interactions, and therefore claim 1 recites an
abstract idea. 2019 Revised Guidance, 84 Fed. Reg. 52. Moreover, like
representative claim 1 in appeal number 2019-001715, the present
application’s claim 1 is directed to the field of leasing personal property,
which further shows that it at least recites an abstract idea. See Ex parte
Stremsdoerfer, Appeal No. 2019-001715, *7, available at https://e-foia.
uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2019001715-02-26-
2020-0 (Feb. 26, 2020); see also Appeal Br. 16 (claim 1 relates “to the art of
‘renting portable property’”).
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Step 2A, prong two
Appellant argues that claim 1 includes “claim limitations that
integrate a judicial exception by implementing a judicial exception with, or
using a judicial exception in conjunction with, two particular machines that
are integral to the claims.” Appeal Br. 13. Specifically, Appellant argues the
“two machines are (1) a processor and storage system and (2) a geographical
tracking system including a receiver and RFID chips attached to each article
of portable property.” Id.
Appellant’s arguments are not persuasive because, as the Examiner
notes, the computer component and RFID recitations of claim 1 “are recited
at a high level of generality and are merely invoked as tools to perform” the
underlying abstract idea. Ans. 5–6. That is, claim 1 merely recites using
these elements as tools rather than improving “the functioning of a
computer, or . . . other technology.” 2019 Revised Guidance, 84 Fed. 55; see
also Appeal Br. 17 (acknowledging claim 1 does not improve “a generic
computer or its operation” or an “RFID transmitter and receiver, an RFID
chip, communication devices, or a land-based or satellite-based geographical
tracking system”).
For these reasons, claim 1 does not include recitations that integrate
the recited certain methods of organizing human activity (commercial or
legal interactions) into a patent-eligible practical application. Therefore,
claim 1 is directed to an abstract idea.
Step 2B
Having determined that claim 1 is directed to an abstract idea, we turn
to whether claim 1 includes additional recitations that provide an inventive
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concept that adds significantly more to the underlying abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant argues claim 1 includes “elements that amount to
‘significantly more’ than the judicial exception” by “permit[ting] the renting
of portable property wherein the property is transferred between lessees
without the owner or a bailiff for the owner always having to take possession
of the returned property back from each lessee.” Appeal Br. 16. Specifically,
Appellant argues “[t]hese elements include multiple pieces of equipment
including a processor and storage system, an active or passive RFID
transmitter and receiver along with RFID chips, communication devices
which can include cell phone or other computers, and a land-based or a
satellite-based geographical tracking system such as Loran, Omega, GPS.”
Id.2; see also id. at 18.
Appellant’s arguments are unpersuasive because Appellant refers to
numerous elements that are not found in claim 1. Claim 1 does include
recitations such as “monitoring for the lessor by the processor and storage
system each rental and transfer of the article, the monitoring by the
processor and storage system includes tracking geographically a location of
the article, the tracking geographically a location of the article is by an RFID
attached to the article.” But claim 1 fails to recite, for example,
“communication devices which can include cell phone or other computers,

2 Appellant cites to “Attachment 1, [a] Wikipedia Radio-frequency
identification article printed on April 4, 2018.” No such evidence appears in
the record. See Appx. Evid. 1 (Apr. 22, 2019). Even if this additional
evidence had been included, it would not have been considered as an appeal
“brief shall not include . . . any new or non-admitted . . . other Evidence.” 37
C.F.R. § 41.37(c)(2) (2018).
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and a land-based or a satellite-based geographical tracking system.” See
Ans. 12. The Specification discloses at least some of the technologies
Appellant lists. See, e.g., Spec. 10–11 (disclosing the use of technologies
such as GPS and mobile devices). But particular embodiments disclosed in
the Specification may not be read into the claims. See Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Appellant argues the use of technologies such as RFID “in the field of
renting personal property provides other meaningful limitations beyond
generally linking the use of the judicial exception (an abstract idea) to a
particular technological environment.” Appeal Br. 18. That is, Appellant
argues the use of the claimed “combination of machines in the field of
renting portable property was not well understood or routine, nor was it a
conventional activity to those in the field of renting portable property.” Id. at
20.
Appellant’s arguments are unpersuasive because the additional
recitations of claim 1 (e.g., using RFID to rent and track portable property),
individually and in combination, represent the addition of well-understood,
routine, conventional elements previously known in the industry , specified
at a high level of generality. See 2019 Revised Guidance, 84 Fed. Reg. at 56.
The Specification, for example, cites to Lee et al. (KR20070073706A;
published July 10, 2007) (“Lee”) as describing “a system for managing
bicycles equipped with an RFID system, which rents, collects, or stores the
bicycles without human intervention by installing an RFID tag to each
bicycle.” Spec. 3. Lee’s system further includes a server (i.e., a processor
and storage system) “for monitoring the database of bicycle information and
bicycle usage information.” Id. A bicycle is portable property because it can
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be transported by, for example, pushing, carrying, or using it. Thus, the use
of the claimed technologies (e.g., RFIDs and processor and storage systems)
in the field of renting portable property was well-understood, routine, and
conventional when the application was filed.
Appellant also directs us to example 36 of the USPTO subject matter
eligibility examples3 to support the argument that claim 1 is patent-eligible
under the step 2B analysis. Appeal Br. 21. Appellant does not explain how
this example—which includes one patent-ineligible exemplary claim and
two patent-eligible exemplary claims (Business Method Examples, *13–
17)—shows that claim 1 is directed to patent-eligible subject matter.
Furthermore, the reasons provided with the patent-eligible exemplary
claims (id. at *16–17) are not applicable to claim 1. One patent-eligible
exemplary claim recites the use of “a high-resolution video camera array
with overlapping views to track items of inventory”—a use that “was not
well-understood, routine, conventional activity to those in the field of
inventory control.” Id. at *16. The other patent-eligible exemplary claim
includes a “combination of limitations [that] provides a hardware and
software solution that improves upon previous inventory management
techniques by avoiding the cumbersome use of RFID and GPS transmitters
and the inaccuracy issues that plagued previous computer vision solutions.”
Id. at *17.
Here, in contrast, the use of the recited technologies (e.g., RFIDs and
processor and storage systems) in the field of renting portable property was

3 Subject Matter Eligibility Examples: Business Methods, USPTO, (available
at https://www.uspto.gov/sites/default/files/documents/101_examples_
1to36.pdf; issued Dec. 2016) (“Business Methods Examples”).
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well-understood, routine, and conventional activity. See, e.g., Spec. 3 (citing
Lee). And, as Appellant acknowledges, the claimed invention does not
improve “a generic computer or its operation” or an “RFID transmitter and
receiver, an RFID chip, communication device, or a land-based or a satellite-
based geographical tracking system.” Appeal Br. 17.
For these reasons, claim 1 simply appends well-understood, routine,
conventional technologies previously known in the industry, specified at a
high level of generality, to the underlying abstract idea of certain methods of
organizing human activity (commercial or legal interactions). Therefore, the
additional elements of claim 1 do not provide an inventive concept that
makes claim 1 significantly more than the underlying abstract idea.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim
1, and of claims 6, 8–11, 16, 17, 21, and 22, which Appellant does not argue
separately.
35 U.S.C. § 103(A)—CLAIMS 1, 6, 8–11, 16, AND 17
In rejecting claim 1 as obvious, the Examiner finds that Foth’s mailing
of a rental article (e.g., a DVD) from a first customer to a second customer
teaches or suggests “transferring sequentially the article between lessees
according to the chronology of the sorted, requested rental periods.” Final
Act. 20 (citing Foth ¶¶ 51, 53, 59) (emphasis omitted).
Appellant contends the Examiner erred because “[t]he delivery service
company [of Foth] stands in the place of the owner and is in effect the bailee
of the owner.” Appeal Br. 21. Appellant argues claim 1 “specifically
require[s] the property to be transferred from lessee to lessee,” but that “[t]he
transmission or transfer of the property from one lessee to another in the
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Foth et al. disclosure is driven and fully managed by the owner and not by
the lessees themselves.” Id. at 22.
Appellant’s arguments are unpersuasive because, as the Examiner
correctly finds, Foth teaches transferring an article from one lessee to
another, even if a third party (e.g., a delivery service) is used in carrying out
the transfer. See Final Act. 20. Claim 1 does not include any negative
recitations that preclude the use of a third party in such manner. See Ans. 15.
Moreover, the Specification explicitly discloses that although a transfer can
be done through an in-person meeting, an alternative is for a “temporary
provider [to] ship the article”—an alternative that “is particularly desirable
for low value items.” Spec. 17. Therefore, the broadest reasonable
interpretation of the disputed recitation, when read in light of the
Specification, encompasses the use of a third party to transfer an article from
one lessee to another lessee.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and of claims 6, 8–11, 16, and 17, which Appellant does not
argue separately under separate headings or sub-headings. See 37 C.F.R.
§ 41.37(c)(1)(iv).
35 U.S.C. § 103(A)—CLAIMS 21 AND 22
In rejecting claim 21 as obvious, the Examiner finds that Yoon’s re-
crediting of a deposit when an item is returned teaches or suggests “wherein
the distributing by the processor and storage system distributes a portion of
the payment to a lessee upon transferring the rented portable property to
another lessee.” Final Act. 31 (citing Yoon col. 9, l. 44–col. 10, l. 3)
(emphasis omitted).
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Appellant argues that in Foth “lessees do not receive any money for
any [of] their services.” Appeal Br. 23. Appellant’s argument is not
persuasive, however, because the Examiner relies on Yoon, not Foth, to
teach or suggest the disputed recitations. Ans. 16.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 21, and claim 22, which Appellant does not argue separately.
CONCLUSION
Claims
Rejected 35 U.S.C. §
References/
Basis Affirmed Reversed
1, 6, 8–11, 16,
17, 21, 22
101 Eligibility 1, 6, 8–11, 16,
17, 21, 22

1, 6, 8–11, 16,
17
103(a) Foth, Snapp,
Morgal, Antony
1, 6, 8–11, 16,
17

21, 22 103(a) Foth, Snapp,
Morgal,
Antony, Yoon
21, 22
Overall
Outcome
1, 6, 8–11, 16,
17, 21, 22

TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED