Jason Langheier et al.

Patent Trials and Appeals Board

Nov 27, 2019

13106845 - (D) (P.T.A.B. Nov. 27, 2019)

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.
13/106,845 05/12/2011 Jason LANGHEIER 377266-991100 6183
26379 7590 11/27/2019
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
FLETCHER, JERRY-DARYL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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 JASON LANGHEIER and DAVID KIM TCHENG
____________

Appeal 2018-005334
Application 13/106,845
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Zipongo. Appeal Br. 1.
Appeal 2018-005334
Application 13/106,845

2
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for nutritional management, comprising:
one or more computing devices;
a nutritional management unit that is capable of being
connected to and interacting with each of the one or more
computing devices over a link, each of the one or more
computing devices communicating data directly to the nutritional
management unit; and
the nutritional management unit further comprising a
nutritional tracking unit that uses multimodal recognition
including image analysis of pixel color and texture and distance
of the image to determine the identity, portion size, caloric value
and nutritional value of a food from an image, and by using
geolocation data, barcode analysis and voice recordings to subset
the image analysis search space to the available foods at a
particular food venue, and a recommendation unit that delivers
personalized recommendations to a user, based on user data, to
balance the caloric and nutritional value, wherein the
personalized recommendations include physical activity, sleep
duration recommendations for the user, recommended recipes,
recommended grocery list items and recommended prepared
meals from restaurants, and connect such recommendations to
actions the user can take in real-time, such as the digital purchase
of a food or activity gear.

REJECTION
Claims 1–22 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Appeal 2018-005334
Application 13/106,845

3
ANALYSIS
35 U.S.C. § 101 Framework
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 long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s 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)). In accordance with that framework,
we first determine what concept 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, or protecting against risk.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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 (citation 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. (alterations in original) (quoting Mayo,
Appeal 2018-005334
Application 13/106,845

4
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
After Appellant’s briefs were filed and the Examiner’s Answer was
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on the application of § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) providing groupings of subject matter that are considered
an abstract idea; and (2) clarifying that a claim is not “directed to” a judicial
exception if the judicial exception is integrated into a practical application of
that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies
to all applications, and to all patents resulting from applications, filed before,
on, or after January 7, 2019. Id.2
Under the 2019 Revised 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 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 MANUAL OF PATENT EXAMINING

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
Appeal 2018-005334
Application 13/106,845

5
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 54, 56.

Independent Claims 1 and 13, and Dependent Claims 2–12 and 14–22
Under the first step of the Mayo/Alice framework, the Examiner
determines that the claims are directed to managing nutrition of a user. See
Ans. 4–5; see also Final Act. 2–3.
Even assuming the propriety of the Examiner’s determination as to
whether the claims are directed to the identified abstract idea, we agree with
the Appellant’s argument that the Examiner’s rejection fails to adequately
demonstrate that the additional claim elements would not amount to
significantly more than the abstract idea. See Appeal Br. 9–11, Reply Br. 1–
2.
The inquiry into whether additional claim elements –– i.e., claim
elements other than those that describe any judicial exception to which a
claim might be directed –– amount to significantly more than the judicial
exception itself considers whether the claim limitations “involve more than
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction & Transmission
Appeal 2018-005334
Application 13/106,845

6
LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir.
2014) (quoting Alice, 573 U.S. at 225). Further, this step “requires more
than recognizing that each claim element, by itself, was known in the art,”
because “an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016). Notably, “[w]hether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
With regard to the second step of the Mayo/Alice framework, the
Examiner determines that the claims include additional elements. Final
Act. 3–4. The Examiner explains that to amount to significantly more than
an abstract idea, the additional elements must be involved in more than the
performance of routine, well understood, and conventional activities
previously known in industry. Id. at 4. In this regard, the Examiner
determines that the nutritional management unit and its “use of image
analysis to determine the identity and size of an item is old and well known
in the art” and that “the identification of objects using image analysis is
routine in the field.” Id.; see Ans. 7.
The Appellant argues that the nutritional management unit’s use of
“multimodal recognition including image analysis of pixel color and texture
and distance of the image to determine the identity, portion size, caloric
value and nutritional value of a food from an image,” as recited in claim 1, is
not well-understood, routine, and conventional activity in the health
Appeal 2018-005334
Application 13/106,845

7
industry. Reply Br. 1–2; see also Appeal Br. 10. The Appellant’s argument
is persuasive.
The Examiner’s determination is based on a general proposition that
image analysis for identity and size of an item is well-understood, routine,
and conventional activity. Supra. However, the claimed imaging analysis is
more specific than that general proposition. Independent claim 1 recites, “a
nutritional tracking unit that uses multimodal recognition including image
analysis of pixel color and texture and distance of the image to determine the
identity, portion size, caloric value and nutritional value of a food from an
image.” Hence, claim 1 recites a specific type of image analysis, i.e.,
analysis of pixel color and texture and distance of an image of food. The
Examiner does not find, on this record, that analysis of an image in this
specifically claimed manner is old and well known in the art or well-
understood, routine, and conventional activity in the health industry.
Independent claim 13 includes a similar recitation as the aforementioned
recitation of claim 1.
Further, we note that the Examiner presents a general statement that
“the courts have held that when a claimed process can be carried out in
existing computers in use, with no new machinery being used, then even
‘highly particularized functionality’ is insufficient to render the invention
patent-eligible (see Dietgoal).”3 Final Act. 4–5. This general statement is
not adequate to support a determination that the nutritional management
unit’s more specific use of “multimodal recognition including image
analysis of pixel color and texture and distance of the image to determine the

3 We understand the Examiner’s citation to “Dietgoal” to refer to DietGoal
Innovations LLC v. Bravo Media LLC, 599 F. App’x 956 (Fed. Cir. 2015).
Appeal 2018-005334
Application 13/106,845

8
identity, portion size, caloric value and nutritional value of a food from an
image,” as recited in claim 1, is well-understood, routine, or conventional.
See Reply Br. 1–2.
For the foregoing reasons, we are persuaded that the Examiner fails to
adequately establish that the claims on appeal survive the second step of the
Mayo/Alice framework. Thus, we do not sustain the rejection of claims 1–
22 under 35 U.S.C. § 101.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility

1–22

REVERSED