Solheim Witt, Marit

Patent Trials and Appeals Board

Jan 27, 2020

13760715 - (R) (P.T.A.B. Jan. 27, 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.
13/760,715 02/06/2013 Marit Solheim Witt 242-002US1 2914
27791 7590 01/27/2020
ALLISON JOHNSON, P.A.
3600 AMERICAN BLVD. W., SUITE 410
MINNEAPOLIS, MN 55431
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
allison@ajiplaw.com
patent@ajiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIT SOLHEIM WITT
Appeal 2017-009450
Application 13/760,715
Technology Center 3700
BEFORE MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
BRANDON J. WARNER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52(a), Appellant1 filed a Request for
Rehearing on October 31, 2019 (“Req. Reh’g”) seeking reconsideration of
our Decision on Appeal mailed October 7, 2019 (“Dec.”). We have
jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b). Except
for any portion specifically withdrawn on rehearing, this Decision on
Request for Rehearing incorporates the Decision on Appeal, including any

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
Appeal 2017-009450
Application 13/760,715
2
abbreviations defined therein for citations to the record, in accordance with
37 C.F.R. § 41.52(a)(1).
ANALYSIS
Appellant’s Request for Rehearing alleges that we “overlooked certain
steps (i.e., limitations) in some of the claims, ha[ve] misapprehended the
inventive concept of some of the claims, and ha[ve] misapprehended how
new case law and USPTO guidelines apply to these limitations.” Req.
Reh’g 1. The Request for Rehearing “focuses solely on claim 33 and the
step of holding at least four metal palettes near the face of an individual.”
Id. Specifically, Appellant contends that “[t]he Board overlooked the fact
that a number of the claims include the step of holding at least four metal
palettes near the face of an individual (see, claims 30, 2–4, 33, 36–41 and
15).” Id. at 2.
Appellant contends that holding metal palettes near the face of an
individual cannot be performed in the human mind and, because this step
cannot be performed in the human mind, there can be no question that the
method of analyzing the personality of an individual has been integrated into
a practical application. Req. Reh’g 3–4. Referencing Berkheimer v. HP
Inc., 881 F.3d 1360 (Fed. Cir. 2018), Appellant contends that “holding at
least four metal palettes near the face of an individual” is not “well-
understood, routine, and conventional activity.” Req. Reh’g 2 (internal
quotations omitted); see also id. at 4–7 (providing further discussion related
to Berkheimer).
Appellant’s contentions are not persuasive. As explained above, the
sole issue presented in this Request for Rehearing related to “the step of
holding at least four metal palettes near the face of an individual.” Req.
Appeal 2017-009450
Application 13/760,715
3
Reh’g. 1. Our Decision explained, and Appellant does not dispute, that
“‘holding’ various objects [near the face of an individual] to facilitate
comparison to an individual” is “no more than insignificant extra-solution
activity, which cannot integrate the mental processes into a practical
application.” Dec. 7. Nor is there any dispute that holding objects near an
individual’s face for these comparisons is well-understood, routine, and
conventional, as explained in our Decision. See id. at 7–9. Rather, the
present dispute relates to the specific content of the objects held up to an
individual’s face.
As explained above, the claims recite holding “metal palettes” near an
individual’s face. Claim 33, for example, does not include further detail on
those “metal palettes,” only that the “metal palettes” are somehow used to
“identify[] a mind-body temperament” based on a predetermined
“correlation of the mind-body temperament and the selected metal palette.”
The Specification explains that these “metal palettes” are simply a structure
that has metallic colors thereon. Spec. 20–22. That is, the “metal palettes”
are used to display metallic colors.
This issue before us is similar to that presented in In re Guldenaar,
911 F.3d 1157, 1162 (Fed. Cir. 2018). There, “[t]he claims . . . recite[d] the
steps of placing a wager, rolling the dice, and paying a payout amount if at
least one wagered outcome occurs—none of which Appellant . . . dispute[d]
is conventional, either alone or in combination.” Guldenaar, 911 F.3d at
1161. In that case, Appellant “contend[ed] that ‘the specifically-claimed
di[c]e’ that have markings on one, two, or three die faces are not
conventional and their recitation in the claims amounts to ‘significantly
more’ than the abstract idea.” Id. The court determined that “[t]he markings
on Appellant’s dice, however, constitute printed matter” because “[e]ach
Appeal 2017-009450
Application 13/760,715
4
die’s marking or lack of marking communicates information to participants
indicating whether the player has won or lost a wager, similar to the
markings on a typical die or a deck of cards,” making “the recited claim
limitations . . . directed to information,” and “the printed indicia on each die
are not functionally related to the substrate of the dice.” Id.
The metallic colors on Appellant’s palette do not cause that palette to
become a manufacture with different functionality, just like “the markings
on each . . . dice [in Guldenaar] d[id] not cause the die itself to become a
manufacture with new functionality.” Guldenaar, 911 F.3d at 1161.
“Because the only arguably unconventional aspect of the recited method . . .
is printed matter, which falls outside the scope of § 101,” Appellant does not
apprise us of a sufficient basis to modify our Decision affirming the
Examiner’s rejection of the claims under § 101. Id. at 1162.
Accordingly, we deny Appellant’s Request for Rehearing.
CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Basis Granted Denied
2–8, 15–20,
30–41
101 Patent
Eligibility
2–8, 15–20,
30–41

Final Outcome on Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
2–8, 15–20,
30–41
101 Patent
Eligibility
2–8, 15–20,
30–41

Appeal 2017-009450
Application 13/760,715
5
TIME PERIOD FOR RESPONSE
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).
DENIED