Ex Parte PICKELSIMER

Patent Trial and Appeal Board

Dec 20, 2018

13188004 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/188,004 07/21/2011 LISA A. PICKELSIMER
116025 7590 12/25/2018
Culhane Meadows PLLC
534 Medlock Road Suite 103
Decatur, GA 30030
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
822028.P001U2 7312
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
sanderson@culhanemeadows.com
eOfficeAction@AppColl.com
patentdocket@culhanemeadows.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA A. PICKELSIMER
Appeal2017-009096
Application 13/188,004 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2-5 and 41-51, which are all of the claims pending in the
application. 2 Appellant identifies Application No. 13/187,878 (Appeal
No. 2017-005820, decided November 27, 2017) as related. See Appeal
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Ms. Lisa A. Pickelsimer.
App. Br. 2.
2 Claims 1 and 23 have been cancelled. Claims 6-22 and 24--40 have been
withdrawn.
Appeal2017-009096
Application 13/188,004
STATEMENT OF THE CASE
According to Appellant, the claims are directed to systems for
categorizing wines, recommending wines, recommending foods, and pairing
wines with foods based on individual taste profiles. Abstract. 3 Claim 41,
reproduced below, is representative of the claimed subject matter:
41. A system for recommending wines and foods to a
consumer, said system comprising:
a master wine database for storing a set of intrinsic wine
flavor characteristics for each of a plurality of wines, wherein
said set of intrinsic wine flavor characteristics is not based on
subjective wine tasting experiences, and wherein said set of
intrinsic wine flavor characteristics comprises values correlated
to each of one or more of sweet, oaked, acidic, light-bodied,
earthy, and tannic;
a master food database for storing a set of food flavor
characteristics for each of a plurality of foods, wherein each said
set of food flavor characteristics is substantially correlated to one
of said sets of intrinsic wine flavor characteristics;
a master user database for storing an individual taste
profile for a consumer, wherein said individual taste profile is
based on said consumer's preferences of one or more human-
detectable flavors found in foods or in beverages other than wine,
and wherein said individual taste profile comprises one or more
scores indicating a preference associated with one or more of said
values;
a wine recommendation engine communicatively coupled
with said master wine database, said master food database, and
said master user database, said wine recommendation engine
comprising a first non-transitory computer-readable medium
3 This Decision refers to: (1) Appellant's Specification filed July 21, 2011
(Spec.); (2) the Final Office Action (Final Act.) mailed June 8, 2016; (3) the
Appeal Brief (App. Br.) filed February 6, 2017; (4) the Examiner's Answer
(Ans.) mailed April 10, 2017; and (5) the Reply Brief (Reply Br.) filed June
9, 2017.
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Application 13/188,004
containing first program instructions for recommending wines to
said consumer;
one or more first processors of a first computer system
coupled to said first non-transitory computer-readable medium
executing said first program instructions and implementing the
following steps:
(a) retrieve said individual taste profile from said
master user database;
(b) select one or more first wines from said master
wine database having values that match said one or more
scores of said individual taste profile; and
( c) recommend to said consumer said one or more
first wines; and
a food pairing engine communicatively coupled with said
master wine database, said master food database, said master
user database, and said wine recommendation engine, said food
pairing engine comprising a second non-transitory computer-
readable medium containing second program instructions for
recommending foods to said consumer;
one or more second processors of a second computer
system coupled to said second non-transitory computer-readable
medium executing said second program instructions and
implementing the following steps:
(i) select at least a first food from said master food
database based on said individual taste profile, wherein a
first set of food flavor characteristics associated with said
first food matches said one or more scores of said
individual taste profile; and
(ii) recommend said first food to said consumer.
REJECTION
Claims 2-5 and 41-51 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 10.
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Our review in this appeal is limited only to the above rejection and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
35 u.s.c. § 101
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. The
provision, however, "contains an important implicit exception: [l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2116 (2013)). The "abstract ideas" category embodies the longstanding rule
that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," and if so, the second step in the analysis
considers the elements of the claims "individually and 'as an ordered
combination'" to determine whether there are additional elements that
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"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297).
Step One
As an initial matter, we observe that independent claims 41, 42, and
4 7 recite systems. As such, the claims are directed to a statutory class of
invention within 35 U.S.C. § 101.
Turning to the first step of the Alice analysis, we agree with the
Examiner's determination that the claims recite an abstract idea directed to
"certain methods involving human activity," in particular, the "concept of
recommending wines and foods and pairing wines with foods," which is "a
well-known concept being practiced by human operators in restaurants."
Ans. 3; see Final Act. 5. Indeed, Appellant's Specification supports the
Examiner's determination that recommending wine, food, and wine pairings
is a human activity. Spec. 2 ("Advice from a trained sommelier and/or a
culinary expert is typically only available when dining in a fine restaurant").
The Examiner also determines, and we agree, that the claims further
recite abstract concepts of "collecting information, analyzing it and
outputting/displaying certain results of the collection and analysis" to
provide the wine and food recommendations. Ans. 3--4. In determining the
claims recite a combination of those abstract-idea processes, among other
cases, the Examiner relies on Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). Ans. 3. Like Electric Power, Appellant's
claimed recommendation system recites the abstract ideas of "collecting
information, analyzing it, and displaying certain results of the collection and
analysis." Elec. Power, 830 F.3d at 1353.
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Appellant's first argument that "the Examiner erred by considering
only independent claim 41, instead of all fifteen pending claims" (App.
Br. 11) is not persuasive. The Examiner thoroughly analyzes independent
claim 41 (see Final Act. 2-10; see also Ans. 2-10) and "consider[s] claim 41
as the representative claim" (Final Act. 10). The Examiner determines that
"there is no meaningful distinction between the independent and dependent
claims [and] the same analysis will be applicable to all the claims as ...
claim 41" (Final Act. 1 O; Ans. 5---6). Indeed, all claims similarly recite "a
master wine database," "a master food database," "a master user database for
storing an individual taste profile," "a wine recommendation engine" that
"recommend[s] to said consumer ... wine," and "a food pairing engine" that
"recommend[s] said ... food to said consumer." Appellant has not provided
substantive, persuasive argument as to why the recited limitations would
render the claim patent eligible for any claims other than claim 41. Upon
review of the remaining claims, we agree with the Examiner that the analysis
of claim 41 applies to the other remaining claims and that the
recommendations recited by those claims are all similarly directed to the
abstract idea of "certain methods involving human activity," in particular the
"concept of recommending wines and foods and pairing wines with foods"
(Ans. 3). Specifically, none of the remaining claims adds sufficient
limitations so as to render the respective claim non-abstract.
Because the Examiner determines that the claims are directed to the
abstract idea of recommending wines, foods, and wine pairings, i.e., "certain
methods involving human activity" (id.), Appellant's argument that the
claims are not directed to other abstract ideas, i.e., "'business aspects' or
'fundamental economic practices"' (App. Br. 10 ( emphasis omitted)), does
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not persuade us the Examiner erred in determining the claims are directed to
an abstract idea. In a relevant case, our reviewing court has confirmed that
systems that generate recommendations for a user by correlating a user
preference profile to a database of items to be recommended are patent
ineligible. Netjlix, Inc. v. Ravi Corporation, 114 F. Supp. 3d 927 (N.D. Cal.
2015), ajf'd, 670 Fed. Appx. 704 (Fed. Cir. 2016) (Rule 36) (affirming the
district court's holding that "generating a viewing history database ...
determining at least one of the associated program criteria from the viewing
history database that meets a user preference profile ... [ and] applying the at
least one of the associated program criteria" in order "to generate at least one
personal viewing recommendation" is directed to an abstract idea that is
patent ineligible); Hemopet v. Hill's Pet Nutrition, Inc., 2014 WL 10317302
(C.D. Cal. 2014), ajf'd, 617 Fed. Appx. 997 (Fed. Cir. 2015) (Rule 36)
(affirming the district court's holding that comparing sets of data to
determine a relationship and providing a recommendation based on the
relationship is directed to an abstract idea that is patent ineligible), cert.
denied, 136 S. Ct. 1679 (2016), rehearing denied, 136 S. Ct. 2481 (2016).
Further, Appellant's argument that the Examiner "writ[ es] an over-
simplified summary of the claims and then analyz[ es] his own summary
rather than doing an analysis of the actual claim language and all the
limitations recited therein" (App. Br. 12) is not persuasive of Examiner
error. A concept (to which a claim is directed) may be characterized
properly in various ways because "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). The Examiner's explanation that the
abstract ideas encompassed by the claims include the "human activity" of
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"recommending wines and foods and pairing wines with foods" by
performing the abstract processes of "collecting information, analyzing it[,]
and outputting/displaying certain results of the collection and analysis"
(Ans. 3--4) fairly characterizes the recited "master wine database for storing
a set of intrinsic wine flavor characteristics," "master food database for
storing a set of food flavor characteristics," and "master user database for
storing an individual taste profile," (all collecting information) and "wine
recommendation engine" that "recommend[s]. .. wine," and "food pairing
engine" that "recommend[s] ... food" (analyzing and outputting results of
the collection and analysis).
Although Appellant argues that the claimed databases and engines
"recite[] a number of intricate relationships between and among a set of
discrete and concrete claim elements" (App. Br. 19) and so "cannot be
accomplished by human[s]" (App. Br. 15), Appellant's invention is not
directed to improvements to a database or other computing technology.
Instead, as the Examiner points out (Ans. 10), Appellant's invention uses
data stored in databases, to provide the human activity of recommending
wine, food, and wine pairings based on taste preferences. The "master wine
database," "master food database," "master user database," and
"correlations" between those databases used to "produce the desired results"
describe additional abstract-idea processes, i.e., collecting, analyzing, and
displaying information, that perform the abstract idea of wine, food, and
wine pairing recommendations, but do not make the claims patent-eligible.
Still further, Appellant argues "the final rejection is not supported by
substantial evidence, which is required for Section 101 rejections." App.
Br. 10; Reply Br. 2-3.
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We are unpersuaded of error. Patent eligibility under 35 U.S.C. § 101
is a question of law that is reviewable de nova. See Dealertrack Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Appellant has provided no
controlling authority that requires the Office to provide factual evidence to
support a determination that a claim is directed to an abstract idea under step
one of the Alice framework. Instead, the Federal Circuit has repeatedly
noted that "the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when [the]
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection."). Here, as discussed
above, we determine the Examiner has adequately articulated the rejection
and provided sufficient reasoning as to why the recited claim recites patent
ineligible matter thus, notifying Appellant of the rejection and the reasons
for the rejection.
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Accordingly, we are not persuaded the Examiner erred in determining
the claims are directed to an abstract idea.
Step Two
Turning to step two of the Alice framework, we agree with the
Examiner that, "[ v ]iewing the claim limitations both individually and in
combination," the claims do not recite significantly more than the abstract
idea itself because the claims "are directed to [the] use of generic
programmed computers implementing generic computer functions [for]
implementing an abstract idea." Ans. 9; Final Act. 8-9.
We disagree with Appellant that the Examiner "includes no analysis
of whether [ recited] additional limitations amount to 'significantly more'
than an abstract idea." App. Br. 24. Stripping the claims of the recited
abstract concepts, the Examiner determines what remains in the claims, i.e.,
the additional limitations, recite "generic computer functions merely used to
implement an abstract idea" (Ans. 8-9) or to define the context in which the
abstract idea is applied (id. (the claims "describ[e] the data stored in each
database")).
Appellant's arguments that the "particular characteristics that are
stored in databases and used to make correlations and associations with other
characteristics, and then used to make particular recommendations ... are
not 'well understood"' (App. Br. 20) and that the claims recite "a technical
advance in the field of wine and food science" (App. Br. 25) highlight the
context in which the abstract idea is applied. But, defining the context in
which the abstract idea is applied does not save the claims from patent-
ineligibility. Elec. Power, 830 F.3d at 1356 ("specify[ing] what
information ... is desirable to gather, analyze, and display" and "performing
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the claimed functions of gathering, analyzing, and displaying ... by
entirely conventional, generic technology" does "not state an arguably
inventive concept in the realm of application of the information-based
abstract ideas."). Rather than creating a new technical field or improving a
technical field such as computing technology, Appellant's claimed invention
applies existing computer technology to recommend wine and food based on
user taste preferences. In particular, the recitation of databases storing wine,
food, and taste data applies generic database technology to store specific
types of data. Further, the claimed features of identifying wines, foods, and
wine pairings that suit a user's tastes, apply generic computer functionality
- correlating and comparing data between databases - to identify
recommended wines and foods.
In addition, we are not persuaded that the Examiner erred by "not
supply[ing] any evidence in the record to support his factual assertions that
the claims recite limitations that 'well-understood, routine and conventional
activities' in the field." Reply Br. 6. Appellant's Specification supports the
Examiner's finding that the additionally recited claim limitations merely
recite the "use of generic programmed computers implementing generic
computer functions." Ans. 9. In particular, the Specification discloses that
"one skilled in the art will appreciate that any of a variety of computer
system configurations may be implemented" to provide the claimed
invention (Spec. 31) and proceeds to describe generic computing
components (id. ("multiprocessor systems, microprocessor-based or
programmable consumer electronics, mainframe computers, minicomputers,
hand-held devices and the like") and typical computing functions (id.
("computer program instructions may be loaded onto a general purpose
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computer ... such that the instructions which execute on the computer or
other programmable data processing apparatus create means for
implementing the functions specified")). Thus, because each of the
limitations is merely a conventional computer operation used to implement
the abstract idea itself on a generic computer, the limitations cannot be said
to amount to significantly more than the abstract idea itself under the second
step of the Alice inquiry.
Additionally, Appellant's argument that "the claims will not preempt
others from using any abstract idea or set of ideas" (App. Br. 19), does not
persuade us the claims are directed to patent-eligible subject matter.
Although preemption is characterized as a driving concern for patent
eligibility, preemption itself is not the test for patent eligibility. Rather,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Where claims are deemed to recite only patent-ineligible subject matter
under the two-step Alice analysis, as they are here, "preemption concerns are
fully addressed and made moot." Id.
Accordingly, we are not persuaded the Examiner erred in concluding
claims 2-5 and 41-51 are directed to patent-ineligible subject matter.
Therefore, we sustain the Examiner's rejections of claims 2-5 and 41-51.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 2-5 and 41-51.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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