Panasonic Intellectual Property Management Co., Ltd.

Patent Trials and Appeals Board

Feb 2, 2021

2020004033 (P.T.A.B. Feb. 2, 2021)

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.
15/088,287 04/01/2016 YUKA ADHIKARI P50239 8314
52123 7590 02/02/2021
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3700
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUKA ADHIKARI, KENTARO NAKAI,
and TOSHIHIRO SOTA
____________

Appeal 2020-004033
Application 15/088,287
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
SCOTT A. DANIELS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, and 4–8 under 35 U.S.C. § 101 as directed to a
judicial exception to patent eligible subject matter. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Panasonic Intellectual Property
Management Co., Ltd., as the Applicant and real party in interest. Appeal
Br. 3.
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THE INVENTION
Appellant’s invention relates to physical training such as weight loss.
Spec. ¶¶ 1, 2, 40, 201. Claim 8, reproduced below, is illustrative of the
subject matter on appeal.
8. A server device in a training system comprising: one or more
memories; and circuitry which, in operation,:
presents content provided by a trainer to a trainee;
acquires an implemented amount of a training implemented by the
trainee by evaluating the amount that the training is implemented by
the trainee within an implementation period in accordance with the
presented content;
acquires, from at least one sensor, body measurement data that
relates to a body of the trainee that is measured by the at least one
sensor;
acquires, based on the acquired body measurement data, an effect
amount indicating change in the body of the trainee caused by the
training;
determines an effect level by comparing the effect amount with a
mapping table including a plurality of effect amount ranges;
calculates a degree of demand for new content that indicates the
degree to which content presumed to be in shortage is required using
the implemented amount and the effect level, the degree of demand
being expressed as a number that relates to a training status level;
generates instruction information indicating the new content and
the degree of demand for the new content to be provided by the
trainer; and
outputs the generated instruction information;
stores a plurality of items of the content provided by the trainer in
the training system; and
calculates the degree of demand for each of the stored plurality of
items of the content by increasing the degree of demand for each
respective one of the stored plurality items of the content when a
corresponding implementation rate of each respective one of the
stored plurality of items of the content is less than a prescribed
threshold value.
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OPINION
Appellant argues all pending claims as a group. Appeal Br. 7–14. We
select claim 8 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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 courts recognize certain judicial exceptions patent eligible
subject matter, 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. 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.
In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific improvement in computer capabilities or, instead, on a process
that qualifies as an “abstract idea” for which computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
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The Supreme Court characterizes the second step of the analysis as “a
search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72). Where the claim is directed to an abstract idea that is implemented
on a computer, merely stating the abstract idea while adding the words
“apply it” is not enough to establish such an inventive concept. Alice, 573
U.S. at 223.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 224.
Under our guidelines, in conducting step one of the Alice framework,
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 interactions 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)).
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “Guidelines”).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look 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.
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Step 1, Prong 1
The Guidelines identify three key concepts identified 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”; and (c) mental
processes including “observation, evaluation, judgment, [and] opinion.”
Guidelines, 84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Act. 3. Appellant argues that claim 1
is not directed to an abstract idea, but does not otherwise challenge the
underlying subsidiary determination that the claim recites an abstract idea.
Appeal Br. 10–11.
There is little question here that claim 1 recites an abstract idea.
Appellant’s Specification explains that the invention presents training
content from a trainer to a trainee to attain a desired “training effect.” Spec.
¶¶ 1, 5. This basic concept of providing information from one person to
another is captured in the recitations of claim 1. Although the Examiner
does not specify any particular type of abstract idea that the claim recites, it
is clear from reading the claim that its recites a method of “managing
personal behavior” and/or mental processes under our Guidelines.
Certain methods of organizing human activity are recognized by the
courts as abstract ideas. In re TLI Communications LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (classifying and storing digital images is an
abstract idea as a method of organizing human activity); see also Intellectual
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Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed.
Cir. 2015) (tracking financial transactions to determine whether they exceed
a pre-set spending limit is a method of organizing human activity);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (screening messages is an abstract idea as a method of organizing
human activity); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering internet content is an
abstract idea as a method of organizing human behavior).
“Information as such is an intangible.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Courts treat collecting
information as well as analyzing information by steps people go through in
their minds as essentially mental processes within the abstract-idea category.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016). The claims here relate to monitoring and managing a trainee’s
behavior by collecting data, processing the data, and notifying the trainee of
new content in order to attain a better training effect. Claims App. As such,
the method recites an abstract idea under the principles espoused in
FairWarning.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “all
inventions at some level 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. 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.
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Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends.
Guidelines. 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 claimed training system
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. Guidelines.
Here, Appellant argues that claim 1 is not directed to an abstract idea
because it integrates the abstract idea into a “practical application” within
the meaning of our Guidelines. Appeal Br. 11. In support of such position,
Appellant argues that the invention requires the use of a machine or, more
particularly, a sensor, to perform a function that serves as a predicate for
analyzing and displaying training information. Id. at 12. Appellant also
argues that the claims do not monopolize the idea of analyzing and
displaying training information because such analysis may be performed
without using a sensor. Id.
Although automating tasks that humans are capable of performing
may be patent eligible if properly claimed (See McRO, 837 F.3d at 1313),
we are not persuaded that Appellant has achieved a practical application
because it uses a sensor. One of the embodiments of Appellant’s invention
involves weight loss training. Spec. ¶ 201. To that end, Appellant’s uses a
“weighing machine” as a sensor. Id. ¶¶ 39, 40 (element 123, Figs. 1A, 2).
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The “weighing machine” (or scale) connects to the internet, either by its own
connection, or through a home gateway, or through devices 122 such as a
smart phone or personal computer. Id.
The device of claim 8 generally performs ten functional steps,
namely: (1) present content; (2) acquire training; (3) acquire data;
(4) acquire an amount; (5) determine an effect; (6) calculate demand;
(7) generate content; (8) output information; (9) store content; and
(10) calculate demand for content. Claims App. The device collects,
processes, and presents information to the trainee to assist the trainee in
managing some aspect of his or her physical life, such as weight loss or
muscle development. Such is properly characterized as managing personal
behavior.
The prospect that Appellant’s device receives data from a sensor does
not render the claims any less abstract. An abstract idea does not become
non-abstract by limiting the invention to a particular technological
environment. Intellectual Ventures I, 792 F.3d at 1367; see also Affinity
Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
(Merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract); see
also Alice, 573 U.S. at 224 (the fact a computer exists in the physical realm
is beside the point).
Unlike Enfish, the focus of the instant claims is not on improving a
computer or a weighing machine, but rather on a process for which
computers and weighing machines are invoked merely as tools. Enfish, 822
F.3d at 1335–36. Appellant’s argument that use of a “sensor” is evidence
that the abstract idea is integrated into a practical application is
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unpersuasive. It would be a simple matter for a trainee to stand on his or her
bathroom scale at home, pick up the telephone, and inform the trainer how
much the trainee weighs by looking at and reporting on the visual display
from the bathroom scale. Connecting the scale to an internet application,
without more, does not rise to the level of a practical application. In our
modern, electronic world, collecting data from sensors and forwarding such
data to a central processing facility over the internet is commonplace if not
entirely mundane. In Ex parte Wartena, Appeal No. 2019-005142, 2020
WL 1486036 (PTAB Mar. 23, 2020), we considered a patient monitoring
system and method that included collecting data on a patient’s weight using
weight scales. Id. at *7. In Wartena, we did not consider the use of a scale
to monitor a patient’s weight to rise to the level of a “practical application”
under our Guidelines. There is nothing presented by Appellant in the instant
case that warrants a different outcome here.
To illustrate what is required for an invention to be “integrated” into a
“practical application,” we reversed an Examiner’s Section 101 rejection in
the case of Ex parte Hladio, Appeal 2018-003051, 2019 WL 2285538
(PTAB April 29, 2019). In that case, the inventor used sensor and computer
technology to improve a surgical procedure that entailed navigation and
alignment of a surgical tool and a patient’s bone. Id. We noted that both the
bone and the surgical tool were physical real world tangible items. Id. We
further noted that the invention was directed to improving the performance
and outcome of the surgical procedure as a result of improved bone-tool
alignment. Id. We reversed the Examiner in that case because, although the
claims recited an abstract idea, the idea was integrated into an application
that was “practical.” Id. In contrast, Appellant’s use of a weighing machine
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in an automated training content delivery system falls short of the standard
of “practical application” required by the Guidelines.
The Examiner is correct that Appellant’s Specification describes the
claimed sensor, memory and circuitry as general purpose computing devices.
Ans. 9. This leads to the conclusion that the invention is merely a generic
computer embodiment of an abstract idea. Id. The claims, thus, fail to
integrate the judicial exception into a practical application and, therefore, are
“directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). “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].’” Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
Under step two of the Alice/Mayo framework, the Examiner
determines that the claims do not include additional elements that are
sufficient to amount to significantly more than the above-identified abstract
idea. Final Act. 14. The Examiner finds that the computer components used
in the invention generically enable collection, analysis, and display of
displaying training information. Id. With respect to the sensor element, the
Examiner finds that acquiring data with a sensor is still just collecting
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information. Id. at 15. The Examiner notes that Appellant describes its
sensor as a “general purpose device.” Id. The Examiner further notes a lack
of detailed teaching disclosure with respect to computer implementation of
the invention as evidence that such computer implementation is routine and
conventional.
By omitting any specialized programming or algorithms and
any particulars of this sensor and circuitry, Applicant’s
specification essentially admits that this hardware is
conventional and performs well understood, routine and
conventional activities in the computing industry.
Id. at 16.
Appellant’s argument regarding step two of the Alice/Mayo
framework is abbreviated and conclusory in character. Appeal Br. 13–14.
The entire section in Appellant’s Appeal Brief is approximately 1 (one) page
in length, much of which merely recites general legal principles that are
ineffectually brought to bear on the facts of the case before us. Id. For
example, Appellant argues that the Examiner’s rejection fails to comply with
the so-called Berkheimer Memo.2
In the instant case, the elements recited in claim 8 that constitute
“additional elements” to the elements that recite the abstract idea are: (1) a
“server device” with “memory” and “circuitry” that performs specified
functions; and (2) a sensor. Claims App., claim 8. Appellant does not even
allege, much less point to any persuasive evidence, that the server device
and sensor represent some form of technological advancement over known

2 The “Berkheimer Memo” refers to a Memorandum from the U.S. Patent &
Trademark Office, entitled Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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computing and sensing instrumentalities. See generally Appeal Br. For
example, management, distribution, and control units 201–216 are merely
described as “processing” units that perform specified functions. Spec.
¶¶ 51–68. Device 102 is described as a device that is used by the trainer for
inputting a training menu. Id. ¶ 69. Device 122 is described as a device that
is used by the trainee for referring to the personal training menu created by
the trainer. Id. ¶ 70. Device 123 is a device used by the trainee for inputting
sensor data such as body weight. Id. ¶ 72.
In view of the amount of disclosure (or lack thereof) in Appellant’s
Specification, Appellant’s reliance on the Berkheimer Memo is of no avail.
Appellant’s Specification describes all of the physical instrumentalities as
either being based on known technology, or are described at a high level of
generality that presumes familiarity on the part of the reader. Id. ¶¶ 51–72.
There is nothing in the description of the computer equipment, software,
user interface, or sensor components that purports to be a breakthrough or
advancement in computer or sensing technology. See Alice, 573 U.S. at 225.
Appellant is required to submit a specification that describes the
invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112(a). For
purposes of the Alice/Mayo analysis, a specification demonstrates the well-
understood, routine, conventional nature of step 2 “additional elements”
when it describes them in a manner that indicates they are sufficiently well-
known that they need not be described with particularity to satisfy 35 U.S.C.
§ 112(a). See Berkheimer Memo, p. 3. That is the case here. Thus, the
Examiner’s findings of fact under Step 2 of the Alice analysis are fully in
accord with the Berkheimer Memo.
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Accordingly, we sustain the Examiner’s Section 101 rejection of
claims 1, 2, and 4–8.
CONCLUSION
Claims
Rejected
§ Basis Affirmed Reversed
1, 2, 4-8 101 Patentable Subject Matter 1, 2, 4-8

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED