Harvill, Young et al.

Patent Trials and Appeals Board

Jan 22, 2020

13598544 - (D) (P.T.A.B. Jan. 22, 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.
13/598,544 08/29/2012 Young Harvill 352432-991201 9255
26379 7590 01/22/2020
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
WOOD, ALLISON G
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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):
PatentDocketingUS-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG HARVILL and ROBERT I. BEAVER III1
Appeal 2019-003707
Application 13/598,544
Technology Center 3600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims relating
to a product-customizing system and method, which have been rejected as
anticipated, obvious, and directed to patent-ineligible subject matter. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Specification states that a “wide variety of customizable,
manufactured products may be partially described as vector patterns which

1 Appellant identifies the real party in interest as Zazzle, Inc. Appeal Br. 1.
We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
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map areas of printing, decoration, embellishment, or material selection to the
physical manufactured product, these customizable areas may be called
Design Areas.” Spec. 1:23–25. However, a “complete description of the
mapping of design areas to product is often impractical or difficult to obtain
from manufacturers.” Id. at 1:26 to 2:1. For example, a product that is
assembled from separate pieces can make mapping difficult. Id. at 2:1–7.
The Specification discloses “a system and method . . . for acquisition,
characterization, and application of Manufacturing patterns to the automated
production of the digital representation of these patterns as interactive media
that gathers a customer’s input, and subsequent production of physical
products.” Id. at 2:8–11.
Claims 1–3, 5–8, and 10 are on appeal. Claim 6, reproduced below, is
illustrative:
6. A method for acquisition, characterization, and
application of one or more manufacturing patterns to the
automated production of the digital representation of these
patterns for a product, the method comprising:
automatically transmitting, using a computer having a
processor that has a manufacturing unit, a set of design area
markups to a manufacturer that returns a reference product with
markups to the manufacturing unit;
generating, by the manufacturing unit, based on the one or
more manufacturing patterns, one or more interactive assets for
the product about the manufacturing of the product;
using, by the manufacturing unit, the one or more
interactive assets to allow a user to interactively customize the
product;
displaying an image of the user customized product to the
user; and
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transmitting, by the manufacturing unit, one of the one or
more interactive assets to the manufacturer that produces the
customized product.

Claim 1 is the other independent claim, and is directed to a system
that comprises a computer and carries out the steps recited in claim 6.
The claims stand rejected as follows:
Claims 1–3, 5–8, and 10 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter (Final Action2 12, Ans. 3);
Claims 1–3, 5–8, and 10 under 35 U.S.C. § 102(e) as anticipated by
Yankton3 (Final Action 17); and
Claims 1–3, 5–8, and 10 under 35 U.S.C. § 103(a) as obvious based
on Yankton and Nykamp4 (Final Action 17).
OPINION
Patent Eligibility
Claims 1–3, 5–8, and 10 stand rejected under 35 U.S.C. § 101 as
being directed to an abstract idea without significantly more. Ans. 3.5 The
Examiner finds that the claims are directed to the “abstract idea of
customizing products.” Id. at 4. The Examiner reasons that “[t]his concept is
considered to be a certain method of organizing human activity because it
relates to commercial or legal interactions such as sales activities or

2 Office Action mailed Dec. 7, 2017.
3 Yankton, US 2008/0147512 A1, published June 19, 2008.
4 Nykamp, US 2005/0251462 A1, published Nov. 10, 2005.
5 The claims were also rejected under 35 U.S.C. § 101 in the Final Office
Action but the Examiner modified the rejection in the Answer to comply
with the examination guidance issued January 7, 2019. Ans. 3.
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behaviors since allowing a user to customize a product and view
customizations of a product is a sales activity or behavior.” Id.
The Examiner finds that “claims 1 and 6 recite the additional elements
of a computer having a processor that has a manufacturing unit wherein the
manufacturing unit generates, uses, and transmits information regarding
interactive assets.” Id. at 5. The Examiner concludes, however, that the
additional elements do not integrate the abstract idea into a practical
application, because they “merely amount to an instruction to implement the
abstract idea on a set of generic computer components.” Id.
Finally, the Examiner concludes that the claims do not include
additional elements that amount to significantly more than the judicial
exception because “the additional elements merely amount to an instruction
to implement the abstract idea on a set of generic computer components. . . .
Even in consideration of the elements in combination, the additional
elements of a computer having a processor that has a manufacturing unit
merely amount to a generic arrangement of computing components.” Id. at
9.
Appellant argues that
nowhere do the claims say/recite/suggest a sales activity. At
most, the claims are directed to the customizing of products (as
acknowledged by the examiner) and not the alleged sales
activity as argued by the examiner. Thus, the claims do not
recite any judicial exception much less the method of
organizing human activity as alleged in the Examiner’s Answer.
Reply Br. 1. Appellant also argues that the claims integrate any patent-
ineligible method of organizing human activity into a practical application.
Id. at 1–2. Specifically, Appellant argues that the claimed system and
method improve the process of manufacturing a customized product. Id. at 2.
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has concluded that “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable under 35 U.S.C. § 101.
See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine if a claim falls into an excluded category, we apply a
two-step framework, described in Mayo and Alice. Id. at 217–18 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
(2012)). We first determine what 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.”).
Patent-ineligible abstract ideas 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)). In contrast, patent-eligible inventions include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, the claimed method employed a mathematical formula, but
the Supreme Court held that “a claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). The
Supreme Court noted, however, that a claim “seeking patent protection for
that formula in the abstract . . . is not accorded the protection of our patent
laws, and this principle cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment.” Id. (citing
Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, and “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 quotation marks 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 (alterations in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Revised Guidance”). Under that guidance, we first
determine whether the claim recites:
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(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 MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
a “well-understood, routine, conventional activity” 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 84 Fed. Reg. at 56.
Revised Guidance Step 2(A), Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception, such as certain methods of organizing human
activity, which include “commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations).” 84 Fed. Reg.
at 52. The Examiner finds that the claims recite a judicial exception of this
type; specifically, “a certain method of organizing human activity because
[they] relate[] to commercial or legal interactions such as sales activities or
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behaviors since allowing a user to customize a product and view
customizations of a product is a sales activity or behavior.” Ans. 4.
Under Step 2A, prong 1 of the Revised Guidance, however, the
relevant question is whether a claim “recites” a judicial exception, not
whether a claimed invention “relates to,” for example, sales activity. The
USPTO has clarified that
a claim recites a judicial exception when the judicial exception
is “set forth” or “described” in the claim. While the terms “set
forth” and “describe” are thus both equated with “recite,” their
different language is intended to indicate that there are two
ways in which an exception can be recited in a claim. For
instance, the claims in Diamond v. Diehr clearly stated a
mathematical equation in the repetitively calculating step, such
that the claims “set forth” an identifiable judicial exception, but
the claims in Alice Corp. v. CLS Bank, “described” the concept
of intermediated settlement without ever explicitly using the
words “intermediated” or “settlement.”
October 2019 Patent Eligibility Guidance Update, page 1; see 84 Fed. Reg.
55942-01 (available at www.uspto.gov/PatentEligibility).
Here, the claims do not clearly state any sales activity. Nor do the
claims “describe” a sale without explicitly using that word; the only
exchange described in claim 6 is transmittal of a set of design area markups
from a computer having a manufacturing unit to a manufacturer, and the
return of a reference product from the manufacturer to the manufacturing
unit. While the manufacturer performs a service in the method of claim 6,
the Examiner has not persuasively explained how the described exchange is
a “sale” of either a set of design area markups or a reference product.
The Specification’s description of the background of the invention,
and the problem it seeks to solve, also indicates that the claimed process is
not a sales activity, but rather a method of designing a customized product.
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The Specification states that customizable products can be partially
described by vector patterns mapping areas of printing, called Design Areas.
Spec. 1:23–25. But a “complete description of the mapping of design areas
to product is often impractical or difficult to obtain from manufacturers.” Id.
at 1:26 to 2:1. “Thus, a system and method are provided for acquisition,
characterization, and application of Manufacturing patterns to the automated
production of the digital representation of these patterns as interactive media
that gathers a customer’s input, and subsequent production of physical
products.” Id. at 2:8–11.
While the customized products resulting from the invention may be
intended to be sold to consumers, the invention is in the method of designing,
not selling, the products. We therefore conclude that the Examiner has not
shown that the claims recite a judicial exception. “If the claim does not recite
a judicial exception, it is not directed to a judicial exception . . . and is
eligible. This concludes the eligibility analysis.” 84 Fed. Reg. at 54. The
rejection of claims 1–3, 5–8, and 10 under 35 U.S.C. § 101 is reversed.
Anticipation
The Examiner finds that Yankton discloses a system and method
meeting all of the limitations of claims 1–3, 5–8, and 10. Final Action 17–
19.
Appellant argues, however, that the “claim[s] recite ‘a computer
having a processor that has a manufacturing unit, the manufacturing unit that
automatically transmits a set of design area markups to a manufacturer that
returns a reference product with mark-ups to the manufacturing unit’ that is
not found in Yankton.” Appeal Br. 7. Specifically,
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in Yankton, the system (allegedly the claimed manufacturing
unit of the computer) both customizes the surfboard and
displays the customized surfboards as shown in Figure 15. In
contrast, the claim element requires that the claimed
“manufacturer that returns a reference product with mark-
ups to the manufacturing unit” which is not found in
Yankton. If it was disclosed in Yankton (which it is not), the
fabrication machine in Yankton would return a reference
product with mark-ups which plainly does not occur in
Yankton.
Id.
With respect to this limitation, the Examiner finds that Yankton at
[0049] discloses the system includes a remote customer
computer station which includes a processor and is connected
via the internet with a server (i.e. manufacturer); additionally,
[0050] discloses the computer station is connected to a
fabrication machine configured to fabricate the customized
board (i.e. manufacturer) and includes a software program (i.e.
manufacturing unit) which includes instructions to the
processor for executing the steps of the method.
Final Action 17–18 (emphasis added).
We agree with Appellant that the Examiner has not identified a
disclosure in Yankton of the disputed limitation. Yankton discloses “methods
and computer implemented apparatuses which allow consumers . . . to
customize boards such as surfboards and paddle boards using a computer
enabled interface and one or more board fabrication machines.” Yankton ¶ 3.
In one embodiment, “[t]he system generally includes a remote customer
computer station connected in a known manner via the internet with a
server. . . . The server is able to communicate information to and from the
remote computer in a known manner to a main computer station.” Id. ¶ 49.
Thus, the system described in Yankton’s paragraph 49 communicates
information between a remote consumer computer station and another
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(main) computer station. The server is not disclosed to “manufacture”
anything, and the Examiner has not persuasively shown that a skilled artisan
would have interpreted the “manufacturer” recited in the claims to
encompass the computer server described in Yankton.
Yankton states that “[t]he main computer station is also connected to
communicate with a computer controlled fabrication machine configured to
fabricate the customized board.” Yankton ¶ 50. Thus, the fabrication
machine manufactures a customized board. Claims 1 and 6, however, require
transmitting “a set of design area markups to a manufacturer that returns a
reference product with markups to the manufacturing unit” as a separate
element from transmitting “interactive assets to the manufacturer that
produces the customized product.” See claim 6 above.6 The reference
product is distinct from the “customized product” recited in the final step of
claim 6.
The Examiner reasons that “the claims [do] not positively recite that
the manufacturer actually returns a reference product with markups to the
manufacturing unit. Rather, as claimed, the manufacture[r] is merely capable
of returning a set of markups to the manufacturing unit.” Ans. 11. Claim 6,
however, expressly recites “automatically transmitting, using a computer
having a processor that has a manufacturing unit, a set of design area
markups to a manufacturer that returns a reference product with markups.”
Independent claim 1 similarly recites a “manufacturing unit that
automatically transmits a set of design area markups to a manufacturer that
returns a reference product with mark-ups.”

6 “[I]nteractive assets . . . render a representation of the customizable
product.” Spec. 11:12.
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The Specification describes this aspect of the invention as follows:
The system next may gather Manufacturing Patterns (126) from
the Manufacturer. . . . [and] generate a set of manufacturing
output files (128) with specific Mark-up to characterize each
Manufacturing Pattern, these are called Design Area
Markups. . . .
The system may then automatically transmit[] Design
Area Markups (130) and assembly instructions to the
Manufacturer for the manufacturing of custom product with
markup, this product may be called Reference Product. The
system may then receive the Physical Reference Product (132)
and use the photographic and computational methods described
in the Intake Flow to map each Design area to the physical
product.
Spec. 10:11–24 (emphasis added).
Thus, when read in light of the Specification, the first step of claim 6
requires transmitting design area markups to a manufacturer, which returns a
physical reference product for use in mapping design areas to a physical
product. The Examiner’s interpretation of the claims—as not requiring the
manufacturer to actually return a reference product—is unreasonably broad
when the claim language is read in light of the Specification.
In summary, while the Examiner has identified a description in
Yankton of a manufacturer (fabrication machine) that produces a customized
product, she has not identified a description of transmitting design area
markups to a manufacturer that returns a reference product with markups.
“Anticipation requires that all of the claim elements and their limitations are
shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266
(Fed. Cir. 2009). The rejection under 35 U.S.C. § 102(e) is therefore
reversed.
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Obviousness
The Examiner rejected claims 1–3, 5–8, and 10 as obvious based on
Yankton and Nykamp, reasoning that
Nykamp explicitly teaches: a manufacturer that returns a
reference product with mark-ups to the manufacturing unit
(Nykamp, see at least: [0115] discloses that in the interactive
product design process (see [0106]), a user may select a color
for the product whereby the system may update the display of
the product to correspond to the design change, e.g. the system
is displaying the product containing the selected customization
features (i.e. markups); see also, [0116]).
Final Action 19. The Examiner concluded that it would have been obvious
to have returned and displayed the customized product as taught
in Nykamp in the product customization system of Yankton
because it would have allowed a product display to be updated
based on a change applied to the product, such as a color added
to the product (see Nykamp, [0115]–[0116]). Additionally it
would have allowed participants in the interactive product
design session to see the product as its design evolves (see
Nykamp, [0117]).
Id. at 20.
Appellant argues that
Nykamp discloses a system for collaborative product
design. Nykamp appears to disclose a manufacturer, but still
fails to disclose the claimed interaction between the
manufacturing unit (that automatically transmits a set of design
area markups to a manufacturer) and the manufacturer (that
returns a reference product with mark-ups to the manufacturing
unit) as claimed.
Appeal Br. 7.
We agree with Appellant that the Examiner has not persuasively
shown that the disputed limitation would have been obvious based on
Yankton and Nykamp. The Examiner points to Nykamp’s paragraphs 115–
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117 as describing a manufacturer that returns a reference product with
markups to a manufacturing unit. Final Action 19–20.
Nykamp describes computer-based systems that can be used to
collaboratively design a product. Nykamp ¶ 1. Nykamp describes an
exemplary process in which “different colors could be used for different
parts of [a] shoe.” Id. ¶ 115. When the user selects a color, “the user’s
communication module 354 sends a Change Design message to the system
server 302,” which “sends a Change Design message to the other user’s
computers 304 . . . [to] update the display of the product to correspond to the
design change.” Id.
In the same example, Nykamp states that the user can select different
lace types, ankle heights, or widths for the shoe. Id. ¶ 116. “When the user
changes one of these aspects of the shoe, the display is modified to illustrate
the change and a Change Design message is similarly sent to the system
server 302 and propagated to the other user computers 304.” Id.
Thus, the disclosures of Nykamp cited by the Examiner describe
updating an image of a product on a display in response to changes to
specific parameters selected by a user. The cited disclosures, however, do
not describe transmitting “a set of design area markups to a manufacturer
that returns a reference product with markups to the manufacturing unit,” as
required by the claims.
In summary, the Examiner has not established that a system or method
meeting all of the limitations of the claims would have been obvious to a
person of ordinary skill in the art based on Yankton and Nykamp. We
therefore reverse the rejection under 35 U.S.C. § 103(a).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 5–8, 10 101 Ineligibility 1–3, 5–8, 10
1–3, 5–8, 10 102(e) Yankton 1–3, 5–8, 10
1–3, 5–8, 10 103(a) Yankton, Nykamp 1–3, 5–8, 10
Overall
Outcome
1–3, 5–8, 10

REVERSED