10746253 (P.T.A.B. Sep. 29, 2014)

Ex Parte Giacchetti

Patent Trial and Appeal BoardSep 29, 2014

10746253 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIELA GIACCHETTI ____________ Appeal 2011-008598 Application 10/746,253 Technology Center 3700 ____________ Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and BRUCE R. WINSOR, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1–46 and 48–50, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is L’OREAL (App. Br. 5). 2 Claim 47 has been canceled. Appeal 2011-008598 Application 10/746,253 2 STATEMENT OF THE CASE Introduction Appellant’s invention relates to a method and system for collecting beauty-related information and/or providing beauty-related diagnosis (see Spec. 2). Exemplary Claim Claims 1 and 39 are illustrative of the invention and read as follows. 1. A method for generating a beauty-related diagnosis for an individual, comprising: presenting a plurality of topic modules respectively associated with a plurality of distinct characteristics of an individual; presenting a plurality of sub-topic modules for at least one of the plurality of topic modules; receiving information on at least one topic associated with the at least one topic module, wherein the received information comprises information collected using fewer than all of the presented sub-topic modules for the at least one topic module, and the collected information is regarding a symptom or a cause of a condition of the individual related to the at least one topic associated with the at least one topic module; generating, by a computer system, a beauty-related diagnosis from the information collected using fewer than all of the presented sub-topic modules for the at least one topic module, the beauty-related diagnosis including an evaluation of the condition based at least in part on the collected information; displaying the beauty-related diagnosis; and recommending additional information be provided using at least one of the presented sub-topic modules for the at least one topic module. Appeal 2011-008598 Application 10/746,253 3 39. A method for generating a beauty-related diagnosis for an individual, comprising: receiving a presentation of a plurality of topic modules respectively associated with a plurality of distinct characteristics of an individual; receiving a presentation of a plurality of sub-topic modules for at least one of the plurality of topic modules; sending information on at least one topic associated with the at least one topic module, wherein the sent information comprises information requested using fewer than all of the presented sub-topic modules for the at least one topic module, and the requested information is regarding a symptom or a cause of a condition of the individual related to the at least one topic associated with the at least one topic module; receiving a beauty-related diagnosis generated, by a computer system, from the information requested using fewer than all of the presented sub-topic modules for the at least one topic module, the beauty-related diagnosis including an evaluation of the condition based at least in part on the requested information; displaying the beauty-related diagnosis; and recommending additional information be provided using at least one of the presented sub-topic modules for the at least one topic module. Evidence Relied Upon Gunderman US 5,566,693 Oct. 22, 1996 Orpaz US 2002/0071604 A1 June 13, 2002 Rubinstenn US 2003/0065552 A1 Apr. 3, 2003 Walker US 6,616,458 B1 Sept. 9, 2003 Ortiz-Valero US 2004/0131996 A1 July 8, 2004 Merola US 6,961,517 B2 Nov. 1, 2005 Appeal 2011-008598 Application 10/746,253 4 The Examiner’s Rejections Claim 39 stands rejected under 35 U.S.C. § 101 as being non- statutory. (See Ans. 3–4). Claims 1–3, 5, 7–9, 12, 14–16, 23, 24, and 32–39 stand rejected under 35 U.S.C. § 102(b) as anticipated by Orpaz. (See Ans. 4–8). Claims 48 and 49 stand rejected under 35 U.S.C. § 102(b) as anticipated by Rubinstenn. (See Ans. 8–10). Claims 17–22 and 40–46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Orpaz and Walker. (See Ans. 10–12). Claims 4, 6, 13, and 25–31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Orpaz and Merola. (See Ans. 12–15). Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Orpaz and Ortiz-Valero. (See Ans. 15). Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Orpaz and Gunderman. (See Ans. 15–16). Claim 50 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Rubinstenn and Walker. (See Ans. 16). Issues on Appeal Did the Examiner err in rejecting claim 39 under 35 U.S.C. § 101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 1–3, 5, 7–9, 12, 14–16, 23, 24, and 32–39 as anticipated under 35 U.S.C. § 102(b) over Orpaz because the reference fails to disclose all the recited limitations of claim 1? Appeal 2011-008598 Application 10/746,253 5 Did the Examiner err in rejecting claims 48 and 49 as anticipated under 35 U.S.C. § 102(b) over Rubinstenn because the reference fails to disclose all the recited limitations of claim 48? ANALYSIS Rejection under 35 U.S.C. § 101 With respect to the 35 U.S.C. § 101 rejection, Appellant contends (App. Br. 17) the Examiner has not provided a proper basis for rejecting claim 39 as non-statutory because the machine-or-transformation test cannot be used as “the sole test for deciding whether an invention is a patent- eligible process” under Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). Appellant further asserts that the recited features of claim 39 are not directed to an abstract idea or a law of nature (id.). We agree with the Examiner that the claimed method is ineligible for patent protection because the claim is directed to an abstract idea (Ans. 3–4, 17). The decision in Alice Corp. Pty. Ltd. v. CLS Bank lnt’l, 134 S.Ct. 2347 (2014) (citing Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1300 (2012)), is controlling. We analyze claim 39 to determine whether the claim embodies a patent-eligible application of an abstract idea or merely nothing more than the abstract idea itself. The evaluation follows the two-part analysis set forth in Mayo: 1) Determine whether the claim is directed to an abstract idea; and 2) if an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. See Alice Corp., 134 S.Ct. at 2350. Appeal 2011-008598 Application 10/746,253 6 As to the first part of the analysis, examples of abstract ideas referenced in Alice Corp. include: fundamental economic practices, certain methods of organizing human activities, “an idea of itself;” and, mathematical relationships or formulas. Claims that include abstract ideas like these are examined under the second part of the analysis to determine whether the abstract idea has been applied in an eligible manner. As to the second part of the analysis, we consider the claim as a whole by considering all claim elements, both individually and in combination. Id. at 2355. Limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words “apply it” (or an equivalent) with an abstract idea; mere instructions to implement an abstract idea on a computer; requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. If there are no meaningful limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claim is directed to non- statutory subject matter under 35 U.S.C. § 101. Claim 39 recites method steps related to a fundamental health and beauty practice such as receiving information about an individual to be used in recommending beauty-related activities or products. The recited steps merely constitute an abstract process of gathering and organizing information without input from a physical device. In other words, the recited steps are directed to a “method of organizing human activities” which is an abstract idea under the first step of the analysis. Next, in Appeal 2011-008598 Application 10/746,253 7 analyzing the claims under the second part of the analysis we find that the claims require no more than a generic computer to perform generic computer functions, such as generating beauty-related diagnosis. We also note that The Supreme Court held that “simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S.Ct. at 1300. See also Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Therefore, the recited method is ineligible for patent protection because the claim is directed to an abstract idea. Accordingly, we sustain the 35 U.S.C. § 101 rejection of claim 39 as being directed to non-statutory subject matter. Rejections under 35 U.S.C. § 102(b) We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusion. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (see Ans. 4–16) and (2) the rebuttals to arguments expressed by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 17– 25). However, we highlight the following for emphasis. Orpaz With respect to claim 1, Appellant contends that the system for simulating the appearance of make-up disclosed by Orpaz does not disclose the claimed “beauty-related diagnosis” (App. Br. 19). Appellant further Appeal 2011-008598 Application 10/746,253 8 argues that Orpaz discloses marketing beauty products, which is different from generating a beauty-related diagnosis (App. Br. 21–22). In response, the Examiner relies on a dictionary3 definition of the term “diagnosis” as “determining or analysis of the cause or nature of a problem or situation (Ans. 18). The Examiner further relies on Figures 3 and 5 and paragraphs 95–97 of Orpaz and asserts promoting and recommending beauty products and other services are considered diagnosis that is generated from the information received from a user (Ans. 19). We agree with the Examiner. Rubinstenn Appellant contends that the cited portion of Rubinstenn in paragraph 13 and 14 does not disclose “presenting a plurality of topic modules” and “receiving at least one of the sub-topic modules, information reflecting at least one result obtained from the individual by performing [a] self- evaluative gesture,” as recited in claim 48 (App. Br. 25). The Examiner finds Rubinstenn provides different topics and sub-topics in the form of questions presented to a consumer (Ans. 21 (citing Rubinstenn, ¶¶ 22–31)). We agree with the Examiner’s findings. As further stated by the Examiner (Ans. 21–22), the recited topic modules and sub-topic modules used for providing recommendations read on the categories of questions presented in the user interface of Rubinstenn (see Rubinstenn, Abstract, ¶¶ 13–14). 3 The Examiner identifies “Random House Unabridged Dictionary” as the source of this definition, accessed at http://dictionary.reference.com/browse/diagnosis Appeal 2011-008598 Application 10/746,253 9 Rejections under 35 U.S.C. § 103(a) With respect to the remaining claims, Appellant challenges the propriety of the combination of Orpaz with the other applied prior art and contends that the cited portions in the additional references do not teach or suggest the disputed features of each claim (App. Br. 25–32). The Examiner provides a comprehensive response, supported by sufficient evidence (Ans. 22–26). We agree with the Examiner’s findings and conclusion and adopt them as our own. CONCLUSIONS 1. The Examiner did not err in rejecting claim 39 under 35 U.S.C. § 101 as directed to non-statutory subject matter. 2. The Examiner did not err in rejecting claims 1–3, 5, 7–9, 12, 14–16, 23, 24, 32–39, 48, and 49 under 35 U.S.C. § 102(b). 3. The Examiner did not err in rejecting claims 4, 6, 10, 11, 17– 22, 25–31, 40–46, and 50 under 35 U.S.C. § 103(a). Appeal 2011-008598 Application 10/746,253 10 DECISION4 The decision of the Examiner rejecting claims 1–46 and 48–50 is affirmed. 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 msc 4 In the event of further prosecution, the Examiner should review the claims (other than claim 39) for compliance with 35 U.S.C. § 101 in view of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), and “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” (June 25, 2014) available at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf. The Examiner should also consider whether any claims encompass non-statutory transitory media such as signals sent over optical or electronic communication links. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP § 2106(I) (9th ed., Rev. 11 Mar. 2014) and Ex parte Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013) (precedential opinion).