Jeffrey Booher

Patent Trials and Appeals Board

Jul 29, 2019

13475850 - (D) (P.T.A.B. Jul. 29, 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.
13/475,850 05/18/2012 Jeffrey Booher BOOH 4412002 1038
100772 7590 07/29/2019
Shiells Law Firm P.C
1910 Pacific Avenue Suite 14000
Dallas, TX 75201
EXAMINER
FLETCHER, JERRY-DARYL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
admin@shiellslaw.com
docket@blackhillsip.com
tfshiells@shiellslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY BOOHER1
____________________

Appeal 2018-007653
Application 13/475,850
Technology Center 3700
____________________

Before DANIEL S. SONG, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Office Action (“Final Act.”) rejecting claims 1–22, 24–28, 30, 31, and
38–42 in the present application. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a).
We AFFIRM.

1 The Appellant is the real party in interest. Appeal Brief (“App. Br.”) 2.
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The claimed invention is directed to a method for producing
customized training plans for multi-discipline endurance athletic
competitions. Title. Representative independent claim 1 reads as follows:
1. A computer-implemented method for creating and
printing or displaying to a user an individually customized multi-
discipline training plan for improving the physical capability of
an athlete in a multi-discipline athletic endurance event,
comprising the steps:
computing a normalized performance value of an
individual athlete for each of at least two different disciplines of
a multi-discipline athletic endurance event;
wherein the normalized performance value for each of the
at least two different disciplines is derived at least in part from a
measured ability of the athlete to sustain work for a selected
period of time,
wherein at least one of the normalized performance values
of the at least two different disciplines further affects a value of
another of the normalized performance values of the at least two
different disciplines,
wherein at least two of the normalized performance values
of the at least two different disciplines each has an associated
intensity level that affects another of the at least two different
disciplines;
generating an electronically or physically printed training
plan customized for said athlete correlated to achieving an
incremental improvement in said normalized performance values
for each of said disciplines within a particular period of time
based on said intensity levels,
accepting new data input from at least one sensor taken
from the group of heart rate monitor, time clock and distance
measured by GPS, and
dynamically recalculating said normalized performance
values based on said new data on a near real-time basis.
App. Br. 38, Claims App.
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REJECTION
The Examiner rejects claims 1–22, 24–28, 30, 31, and 38–42 as being
directed to patent ineligible subject matter under the judicial exception to
35 U.S.C. § 101. Final Act. 2.

PRINCIPLES OF LAW
The controlling statute 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 Courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(2012).
The Supreme Court has set forth “a 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
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing
Mayo, 566 U.S. at 72–73). According to the Supreme Court’s framework,
we must first determine whether the claims at issue are directed to one of
those concepts. Id.
If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. “A claim that recites an abstract idea must include
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‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Id. at 221 (quoting Mayo, 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.

ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv); In re Jung, 637 F.3d 1356, 1365–
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010
(precedential)). In that regard, Appellant’s arguments are directed to
independent claim 1. App. Br. 22–35. Thus, claim 1 is representative, and
the remaining claims stand or fall with claim 1.
In applying Step One of the Alice framework, the Examiner
determines that claim 1 recites abstract ideas of:
computing a normalized performance value of an individual for
a plurality of activities;
deriving the normalized values in part from a measured ability
of an athlete to sustain work for a period of time;
using the normalized performance values for the different
activities to affect other values; and
generating a customized training plan based on the normalized
values.
Final Act. 3.
The Examiner explains that the recited subject matter are abstract
ideas because they:
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involve[] the collecting and comparing of information
(collecting performance values and comparing them to each
other) and the use of mathematical relationships to perform
calculations (normalization of performance values). The courts
have identified that collecting data, analyzing the data and
displaying certain results of the collecting and analysis is an
abstract idea of itself (see Electric Power Group LLC. v. Alstom
S.A.).
Final Act. 3.
In applying Step Two of the Alice framework, the Examiner further
determines that “[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the use of a computing device to perform calculations and display
information is a routine function of a generic computing device.” Final Act.
3. According to the Examiner, “[w]hen viewed either as individual
limitations or as a combination, the claims as a whole do not significantly
add to the abstract idea.” Final Act. 4. In that regard, the Examiner
observes that “the claims themselves do not purport to improve the
functioning of the computer itself or the sensors used,” and the “[u]se of an
unspecified, generic computer does not transform an abstract idea into a
patent eligible invention.” Final Act. 4.
We agree with the Examiner, and consider claim 1 and the arguments
of the Appellant infra.
The PTO recently published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). This Guidance provides that in
conducting Step One of the Alice framework, we first look to whether the
claim recites:
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Prong 1: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human interactions such as a fundamental
economic practice, or mental processes); and
Prong 2: additional elements that integrate the judicial exception
into a practical application.
See Guidance.
In other words, under Prong 1, we look to whether the claim recites an
abstract idea. If the claim recites an abstract idea, we look under Prong 2 at
the claim, as a whole, and determine whether the claim is directed to the
abstract idea or, instead, is directed to a “practical application” of the
abstract idea.
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to Step Two under
Alice framework to determine whether the claim adds a specific limitation
beyond the judicial exception that is not well-understood, routine,
conventional in the field, or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Guidance.

Alice Step One, Prong 1
The Guidance identifies three key concepts as abstract ideas:
(a) mathematical concepts including “mathematical relationships,
mathematical formulas or equations, mathematical calculations”; (b) certain
methods of organizing human activity, such as “fundamental economic
principles or practices,” “commercial or legal interactions,” and “managing
personal behavior or relationships or interactions between people”; and
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(c) mental processes including “observation, evaluation, judgment, [and]
opinion.” See Guidance 52.
Claim 1 recites the steps of “computing a normalized performance
value,” wherein these values are “derived” using “measured ability of the
athlete,” and that the derived normalized performance value of one
discipline has an associated intensity level that affects another discipline.
App. 38, Claims App. However, collecting and analyzing information,
without more, are treated as essentially mental processes within the abstract
idea category. FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1093 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016)); see also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016)) (explaining that
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, are essentially mental processes
within the abstract-idea category). These limitations recite intangible
information (“measured ability,” “normalized performance value”), and also
recite conducting mental processing and/or mathematical calculations
(“computing,” “deriv[ing]”). We agree with the Examiner’s assessment that
the use of “mathematical relationships to calculate values that affect each
other is merely an abstract idea of performing mathematical computations.
The results of these calculations are merely used to display results on a
display or printed on a substrate, and thus do not transform the abstract idea
into patent eligible subject matter.” Ans. 5.
Therefore, we agree with the Examiner’s determination that claim 1
recites abstract ideas.

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Alice Step One, Prong 2
Under Prong 2 of the Guidance, we do not assume that such claims
are directed to patent ineligible subject matter because “[a]t some level, ‘all
inventions . . . embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.’” In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice (quoting Mayo).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015) (citation omitted)). If the claims are not directed to an
abstract idea, the inquiry ends. Guidance. If the claims are “directed to” an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework. Id.
Consequently, we consider whether the method of claim 1 includes
additional elements that integrate the judicial exception into a practical
application. A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.
Guidance.
As set forth above, claim 1 recites a computer-implemented method,
and further recites the steps of generating electronically or physically printed
training plan, accepting new data input from a sensor, and recalculating the
normalized performance values based on the new data. App. Br. 38, Claims
App. The step of “generating an electronically or physically printed training
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plan customized for said athlete correlated to achieving an incremental
improvement in said normalized performance values for each of said
disciplines within a particular period of time based on said intensity levels,”
merely requires the displaying or printing the result of the abstract
computing, deriving, and measuring steps. Such step of displaying or
printing the results does not integrate the recited abstract steps into a
practical application. The recitation that the generated training plan is
“correlated to achieving an incremental improvement” appears to imply that
there may be other steps required to generate such a training plan. However,
not only are such steps not recited in the claim, but such steps would appear
to also only involve additional abstract mental and/or computing steps.
The recited step of accepting new data input from a sensor merely
involves the receipt of additional intangible information. The fact that the
claim recites that this intangible information is obtained from a heart rate
monitor, time clock, and/or GPS merely specifies the source of the
intangible information, and does not integrate the recited abstract ideas into
a practical application as to those devices. Specifically, we observe that the
claim does not recite that the received information is used to alter their
operation or function.
Finally, the recited step of recalculating the normalized performance
values based on the newly received data on a near real-time basis merely
requires re-performing the previously recited computing and deriving steps,
which are abstract for the reasons discussed above.
Therefore, in our assessment, the above noted limitations do not
integrate the judicial exceptions into a practical application in accordance
with Prong 2 of the Guidance.
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Alice Step Two
In accordance with Alice, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217. We agree with the Examiner that the
recited limitations of claim 1, fail to transform the nature of method claim 1
into a patent-eligible application. Final Act. 3–4. As discussed above, the
individual limitations recite steps that are abstract, including intangible
information (“measured ability,” “normalized performance value”), and
mental processing and/or mathematical calculations (“computing,”
“deriv[ing]”), and as such, fail to transform the abstract nature of the claim.
Moreover, the step of generating electronically or physically printed training
plan, accepting new data input, and recalculating the normalized
performance values based thereon, does not transform the abstract nature of
the claimed method either, in that these steps merely display or print the
results of the abstract steps, and update the results using more recent abstract
information.
In context of the combination, we observe that the preamble of
claim 1 recites that the method is “computer-implemented.” App. Br. 38,
Claims App. However, the fact that claim 1 recites a generic computer for
implementation of the claimed method steps does not establish that the
claimed method is not abstract. “Courts have examined claims that required
the use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”
Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015),
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quoted in Guidance, 84 Fed. Reg. at 52 n.14. Here, claim 1 broadly recites a
generic computer that simply executes the abstract method steps described
above, and a general-purpose computer that merely executes the judicial
exception is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716–17 (Fed. Cir. 2014). Using a computer “only for its most
basic function, the performance of repetitive calculations,” may not impose
meaningful limits on the claim’s scope. Bancorp Servs. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
The Appellant argues that claim 1 includes the further limitation of
“accepting new data input from at least one sensor” recites non-abstract
subject matter.” App. Br. 35. However, the recited sensor merely specifies
the source of intangible information, and fails to transform the method into a
patent-eligible application. App. Br. 35. In addition, although claim 1
recites a heart rate monitor, time clock, and/or GPS, the claim does not recite
any limitation that transforms such devices that provide the abstract
information, or transforms the computer used to process the abstract
information in accordance with the recited steps. Therefore, considering the
claim as a whole, the Appellant’s invention lacks a technical solution to a
technical problem, and the recited limitations of claim 1, fail to transform
the nature of the claimed method into a patent-eligible application.
The Appellant argues that “Alice Corp. precludes the finding that the
present invention of Claim 1 is ‘abstract’ at least because Claim 1 does not
claim a fundamental practice, such as a fundamental athletic practice, as
contemplated by Alice Corp.” App. Br. 24. According to the Appellant,
claim 1 “is not directed to a fundamental athletic practice, but to the
contrary, Claim 1 is directed [] towards a non-fundamental and
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unconventional athletic practice that is not longstanding, and hence, should
not be deemed an abstract idea under 35 U.S.C. § 101.” App. Br. 26; see
also id. at 24–25, 28–29.
However, as the Examiner explains, “fundamental practices” is only
one of the categories identified as ineligible under the Alice framework, and
“a non-finding in one category does not preclude the analysis under the other
categories.” Ans. 6. Indeed, the Appellant’s argument does not address the
fact that mathematical concepts and mental processes are also considered
abstract ideas. In that regard, we agree with the Examiner’s assessment that
claim 1 recites abstract ideas in that “the collecting of data, the analysis of
the collected data, and the displaying of certain results of the collecting and
analysis.” Ans. 4–5. In addition, we observe that the framework set forth in
Alice is not limited exclusively to fundamental practices, but rather, is
applicable for determining whether a claimed invention is directed to patent
ineligible subject matter, and as noted by the Examiner, “the two-part
Alice/Mayo framework have been applied to the claims.” Ans. 5.
The Appellant argues that the claimed invention “is more than a mere
displaying of results - this is a determination of results according to an
unconventional training plan.” App. Br. 26. However, the fact that the
claimed invention may be unconventional or novel does not establish that it
is directed to patent eligible subject matter. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (Explaining
that even if the techniques claimed are groundbreaking, innovative, or even
brilliant, that is not enough for eligibility). The Appellant also asserts that
the training plan limitation also provides “additional elements that are
sufficient to amount to significantly more than the judicial exception under
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Part II of the analysis.” App. Br. 23. However, this assertion is not
supported or explained, and we disagree for the reasons already discussed
above.
The Appellant also argues that the calculations are too complex to be
handled by the human mind. App. Br. 31 (citing Cybersource, 654 F.3d
1366, 1376). However, neither the claims nor the Specification establishes
that the calculations involved in computing normalized performance values,
correlating values and intensity levels, etc., are complex. In that regard, we
observe that the Specification does not appear to describe in detail, the
calculations necessary in the performance of the recited method, much less
establish that the calculations are complex. Moreover, using a computer to
perform calculations to achieve a solution more quickly is not dispositive in
establishing patent eligibility. See Versata, 793 F.3d at 1335 (citing SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In
order for the addition of a machine to impose a meaningful limit on the
scope of a claim, it must play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly, i.e.,
through the utilization of a computer for performing calculations.”)); see
also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“the fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
The Appellant asserts that the claimed invention “is similar to Diehr –
– here, algorithm used for ‘curing’ of muscle (instead of rubber, as in Diehr)
since, in these claims, there is a specific recitation of employing the training
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schedule to improve physical capability of the athlete.” App. Br. 36 (citing
Diamond v. Diehr, 450 U.S. 175, 185 (1981)); see also App. Br. 30, 33–34.
According to the Appellant, “Claim 1 concentrates upon triathletic ability,
also controlling or influencing a physical trait, such as physical capability,
muscle tone or mass, etc.” App. Br. 34. As such, the Appellant asserts that
the claim recites generating a plan and
algorithmic development of a plan that, when implemented by
the athlete, improves his/her physical capability in a measurable
way, is like the algorithmic method for curing rubber
implemented in Dier [sic, Diehr], where implementation of the
algorithmic method likewise is used to alter the physical
properties of the rubber.
App. Br. 35.
We do not agree with the Appellant that its invention is analogous to
the process disclosed in Diehr. In Diehr, the Supreme Court determined that
the claim at issue recited a process for molding rubber products, and
although the process utilized a mathematical formula, the claim was “not as
an attempt to patent a mathematical formula.” Diehr, 450 U.S. 175, 191
(1981). The process in Diehr involved a process for transforming uncured
synthetic rubber into cured precision rubber products. Id. at 177. In
contrast, the present invention is not directed to a technological process in
which the athletic improvement is based on technological transformation of
the athlete that ensures a specific outcome. Instead, the present invention is
directed to generation of, essentially, a customized document (in electronic
or printed form) with recommendations for training, which presumably, if
followed, may result in higher athletic performance. Of course, the asserted
higher athletic performance is not only unspecific, but it is also not ensured
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and is ultimately speculative. Thus, the Appellant’s argument drawing
analogy with Diehr is unpersuasive.
In summary, as evident from the above discussion, we agree with the
Examiner’s assessment that claim 1 is directed to the abstract idea, which is
ineligible for patent protection. The remaining claims 2–22, 24–28, 30, 31,
and 38–42 fall with claim 1.

Claims 40–42
The Appellants arguments specifically directed to dependent claims
40–42 (App. Br. 20–22) are moot as the additional basis of the rejection of
these dependent claims have been withdrawn by the Examiner. Ans. 4.

CONCLUSION
The Examiner’s rejection of claims 1–22, 24–28, 30, 31, and 38–42 as
being directed to patent ineligible subject matter under the judicial exception
to 35 U.S.C. § 101 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED