Panasonic Intellectual Property Management Co., Ltd.Download PDFPatent Trials and Appeals BoardFeb 2, 20212020004033 (P.T.A.B. Feb. 2, 2021) Copy Citation 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. Appeal 2020-004033 Application 15/088,287 2 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. Appeal 2020-004033 Application 15/088,287 3 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). Appeal 2020-004033 Application 15/088,287 4 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. Appeal 2020-004033 Application 15/088,287 5 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 Appeal 2020-004033 Application 15/088,287 6 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. Appeal 2020-004033 Application 15/088,287 7 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). Appeal 2020-004033 Application 15/088,287 8 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 Appeal 2020-004033 Application 15/088,287 9 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 Appeal 2020-004033 Application 15/088,287 10 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 Appeal 2020-004033 Application 15/088,287 11 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). Appeal 2020-004033 Application 15/088,287 12 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. Appeal 2020-004033 Application 15/088,287 13 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 Copy with citationCopy as parenthetical citation