11266715 (P.T.A.B. Nov. 18, 2013)

Ex Parte Hamer

Patent Trial and Appeal BoardNov 18, 2013

11266715 (P.T.A.B. Nov. 18, 2013)

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. 11/266,715 11/03/2005 Douglas Taylor Hamer 33185-04 9055 7590 11/19/2013 Nexsen Pruet, LLC P.O. Box 10107 Greenville, SC 29603 EXAMINER CHIU, RALEIGH W ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 11/19/2013 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 DOUGLAS TAYLOR HAMER ____________________ Appeal 2011-013191 Application 11/266,715 Technology Center 3700 ____________________ Before MICHAEL C. ASTORINO, JOHN W. MORRISON, and MCHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013191 Application 11/266,715 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 13 and 14 under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. Ans. 4-5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 13 and 14 are the independent claims on appeal. Claim 13 is reproduced below and is illustrative of the appealed subject matter. 13. A process for playing a party game by two people wherein each player inserts an end of a flexible straw into their mouth, said flexible straw having two open ends and said flexible straw contains a semi-solid flavored material selected from the group consisting of jellied drinks, granitas, and slushes between said two open ends and one of said two people sucks and the other of said two people blows into the straw to move the flavored material from the straw into the mouth of said one of said two people. ANALYSIS The Examiner found that claims 13 and 14 were not directed to statutory matter under 35 U.S.C. § 101. Ans. 4-5. In particular, the Examiner found there to be “an insufficient recitation of a machine or a transformation” as the Examiner found the claimed “articles such as a semi- solid material or a flexible straw” to be “merely objects on which the method operates.” Ans. 4. Although the machine or transformation test is not the exclusive test for deciding whether an invention is a patent-eligible “process” under 35 U.S.C. § 101, it is a useful and important investigative tool. See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). Appellant contends that “there is recitation of structure and the activation of forces Appeal 2011-013191 Application 11/266,715 3 upon that structure to cause movement of material from one location to another.” Br. 5. The rejection appears to have addressed only one of the relevant factors where a machine or apparatus is recited in a patent claim. See Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43922, 43925 (Jul. 27, 2010); see also Manual of Patent Examining Procedure (MPEP) § 2106(II)(B)(1)(a) (8th ed., Rev. 9, August 2012). However, the rejection does not address the particularity or generality of the recited flexible straw or semi-solid flavored material. The rejection also does not address whether the use of the recited flexible straw or semi-solid flavored material contributes only nominally or insignificantly to the execution of the claimed method, or instead imposes meaningful limits on the execution of the claimed process. See Interim Guidance, 75 Fed. Reg. at 43925; see also MPEP § 2106(II)(B)(1)(a). The claimed steps do not appear capable of being carried out by a human alone; rather, the claimed steps are tied to the flexible straw and semi-solid flavored material. Based on the record before us, the Examiner has not adequately established there to be an insufficient recitation of a machine1 such that the claims are nonetheless drawn to an abstract idea despite meeting the machine or transformation test on its face. See Mayo Collaborative Servs. v. 1 As to Appellant’s contention that “the movement of physical matter from one location to another constitutes a [sufficient] transformation” (Br. 5), we agree with the Examiner that “a transformation means more tha[n] simply changing the location of an article” (Ans. 6) and that “[t]here is… no occurrence of a transformation because neither the semi-solid material nor the straw transforms to a different state or thing” (Id. at 4). Appeal 2011-013191 Application 11/266,715 4 Prometheus Labs, Inc., 132 S.Ct. 1289, 1303 (2012) (the machine-or- transformation test does not “trump” the exclusions to patentable subject matter set forth in Bilski). The Examiner also found that “the claims are mere statements of a general concept of human behavior,” such as “a human following rules or instructions for playing a game.” Ans. 4, 5. The involvement of a general concept (such as a principle, theory, plan, or scheme) in executing the steps of a method can be another clue that a claim is drawn to an abstract idea. Interim Guidance, 75 Fed. Reg. at 43925-43926; see also MPEP § 2106(II)(B)(1)(d). However, the rejection does not address the relevant factors where a general concept is present in a patent claim. Interim Guidance, 75 Fed. Reg. at 43925-43926; see also MPEP § 2106(II)(B)(1)(d). For example, the rejection does not address the extent to which the concept’s use would be preempted in other fields, the extent to which the claim is so abstract that it would cover both known and unknown uses of the concept, whether the concept is disembodied or instantiated, or whether the performance of the process is observable and verifiable versus subjective and imperceptible. Interim Guidance, 75 Fed. Reg. at 43925- 43926; see also MPEP § 2106(II)(B)(1)(d). Without more, it is unclear, for example, how the claimed steps would preempt the use of the concept in other fields. Based on the record before us, the Examiner has not adequately established there to be a general concept involved in executing the steps of the method to support that the claims are directed to an abstract idea. Appeal 2011-013191 Application 11/266,715 5 For the foregoing reasons, we do not sustain the Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 101 as directed to non-statutory subject matter. DECISION The Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 101 is REVERSED. REVERSED mls