Albert Holzhacker

Patent Trials and Appeals Board

Jun 1, 2020

2019002883 (P.T.A.B. Jun. 1, 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.
14/644,093 03/10/2015 Albert Holzhacker 3654-P12686US 5792
24247 7590 06/01/2020
TRASKBRITT, P.C.
P.O. BOX 2550
SALT LAKE CITY, UT 84110
EXAMINER
THAI, XUAN MARIAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT HOLZHACKER
Appeal 2019-002883
Application 14/644,093
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and
STEFAN STAICOVICI, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–17, 19, 21, and 22. 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 the real party in interest as Cento E Vinte 120
Participacoes E Empreendimentos LTDA. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a system, device, and method to develop
human characteristics and brain training with specialized computer-based
applications. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A human characteristic development and event database
management system, comprising:
a processor operably coupled with an input device, an
electronic display and a memory device,
wherein the processor is configured to operate an
application stored in the memory device and configured to:
display a graphical user interface to the electronic
display;
prompt the user to interact with the graphical user
interface generate entries that include information about a
life event experienced by the user responsive to inputs
received through interacting with the graphical user
interface with the input device;
store each entry generated by the user in a database
stored in the memory device;
prompt the user to interact with the graphical user
interface by presenting a predefined list of character
strengths to the user on the electronic display through the
graphical user interface for the user to select from, the list
of character strengths consisting essentially of the
following character strengths as attributes of the user:
creativity, curiosity, judgment, love of learning,
perspective, bravery, perseverance, honesty, zest, love,
kindness, social intelligence, teamwork, fairness,
leadership, forgiveness, humility, prudence, self-control,
appreciation of beauty and excellence, gratitude, hope,
humor, and spirituality;
assign at least one user-selected character strength
to each entry as being a character strength that was used
by the user in dealing with the respective life event and
modify the database to include this assignment;
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categorize one or more of the entries as a progress
entry and modify the database to include this
categorization; and
output a celebration message through the graphical
user interface responsive to determining improvement has
been achieved with regard to a user-selected character
strength over multiple progress entries stored in the
database.
Appeal Br., Claims Appendix.
OPINION
The Examiner rejects claims 1, 2, 4–17, 19, 21, and 22 as being
directed to patent ineligible subject matter under the judicial exception to 35
U.S.C. § 101. Final Act. 7. Specifically, the Examiner finds that these
claims are directed to an “abstract idea in the form of an idea of itself,” and
“the claims do not include elements that, taken individually and also as an
ordered combination, are sufficient to amount to significantly more than the
judicial exception.” Final Act. 7, 9. In that regard, the Examiner finds that
the various elements recited in the claims recite “generic, conventional, and
well-known computing elements and the claimed abstract idea is simply
embodied on these computing elements as opposed to being an improvement
to their technological functioning.” Final Act. 9. The Appellant disagrees
with the Examiner’s determination, and argues all of the claims together.
Accordingly, all of the claims stand or fall together.
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
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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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
‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Id. at 221 (alterations in
original) (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.
The PTO published revised guidance on the application of Section
101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”). The Guidance provides that in conducting
Step One analysis of the Alice framework, we first look to whether the claim
recites:
Prong 1: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity, or mental processes); and
Prong 2: additional elements that integrate the judicial exception
into a practical application.
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
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Alice framework to determine whether the claim adds a specific limitation
individually or as an ordered combination, 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.
As to the rejection, the Appellant argues that the pending claims are
eligible under 35 U.S.C. § 101 because:
1) the claims do not recite any of the abstract ideas identified by
the USPTO in the 2019 Revised Patent Subject Matter
Eligibility Guidance . . . ,
2) even if, arguendo, the claims recite an abstract idea, the
claims integrate the abstract idea into a practical application,
3) even if, arguendo, the claims recite an abstract idea, the
claims are directed to significantly more than any alleged
abstract idea, and
4) the specific list of character strengths recited in the claims
should be given patentable weight within any § 101 analysis.
Reply Br. 2 (paragraphing added), citing Guidance.

Alice Step One, Guidance Step 2A, 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
(c) mental processes including “observation, evaluation, judgment, [and]
opinion.” See Guidance 52.
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As noted above, in applying Step One of the Alice framework, the
Examiner determines that claim 1 is directed to an “abstract idea.” Final
Act. 7. The Appellant disagrees and argues that the Examiner’s
determination is incorrect because “the claims do not recite subject matter
within any of the groupings of abstract ideas identified” in the Guidance.
Appeal Br. 2.
We agree with the Examiner because claim 1 recites mental processes
involving observation, evaluation, judgment, and opinion. In particular, the
recited step of having the user enter “information about a life event
experienced by the user” requires the mental process of self-observation in
that such events must be experienced and recollected for entry. The recited
step of assigning “user-selected character strength . . . used by the user in
dealing with the respective life event,” requires the mental process of self-
observation and evaluation in that the user must recollect, and mentally
determine, which character strength was involved and used during the life
event. The recited step of categorizing an entry “as a progress entry”
requires the mental process of self-evaluation, judgment, and opinion in that
the user must mentally determine if the character strength was used in a
manner that indicates that the user has made progress in the use of a
particular character strength.
The Appellant argues that “the claim elements do not fall within the
grouping of ‘mental processes’” because “the steps could not be performed
in the human mind.” Appeal Br. 3. However, certain claims that recite
collecting and analyzing information may be treated as mental processes
within the abstract idea category. FairWarning IP, LLC v. Iatric Sys., 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.
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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, is essentially mental
processes within the abstract-idea category). The fact that claim 1 requires
such mental processes to be then entered and recorded by a user via a
graphical user interface of a processor does not negate the fact that the
claims recite such mental processes. Therefore, because claim 1 recites
mental processes, we proceed to the next step of the analysis.

Alice Step One, Guidance Step 2A, Prong 2
Under Prong 2 of the Guidance, we do not assume that claims reciting
an abstract idea 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) (alteration in original)
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 Am. 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)). 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.
The Guidance instructs that the “directed to” issue is to be analyzed as
to whether representative 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
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judicial exception in a manner that imposes a meaningful limit on the
judicial exception beyond generally linking the use of the judicial exception
to a particular technological environment or field of use, such that the claim
is more than a drafting effort designed to monopolize the judicial exception.
Guidance.
The Appellant argues that even if the claims recite an abstract idea,
the claims integrate the abstract idea into a practical application because
recited steps of prompting the user, assigning character strength,
categorizing entries, and outputting a celebration message “impose a
meaningful limit on the judicial exception such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Reply Br. 5–
6 (reproducing the recited limitations of the claim 1). The Appellant asserts
that the recited system including its “processor,” “input device,” “electronic
display,” and “memory device” utilizes any alleged judicial exception in
meaningful way beyond just linking the use of the judicial exception to a
“particular technological environment.” Reply Br. 6. The Appellant further
asserts that “[t]he system could be analogized to an exercise machine that is
designed to develop a particular muscle,” i.e., a character strength (Appeal
Br. 7), and that the specific character traits “impose a meaningful limitation
because . . . [they] enable the claimed improvement of developing or at least
encouraging development of human characteristics.” Reply Br. 7.
We do not agree with the Appellant, and conclude that, as a whole, the
claim is directed to the abstract idea rather than a “practical application” of
the abstract idea. The recited steps of prompting the user, assigning
character strength, categorizing entries, are directed to requiring the
determinations made in performing mental steps to be entered and recorded
by a user via a graphical user interface of a processor, and the recited step of
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outputting a congratulatory message merely provides a message based on
indication of progress by the user via mental determination. Although the
claimed system includes its “processor,” “input device,” “electronic
display,” and “memory device,” the above-noted user’s mental processes are
not meaningfully integrated into such structural elements, but rather, the
structural elements merely provide some unspecified graphical user interface
to facilitate entry and recordation of these mental processes. As the
Examiner points out as to the recited steps, “[t]he claims lack specificity as
to how they are performed, being recited in high level broad terms that can
be interpreted as mental steps or generic processes to computing devices,”
and “fail[] to recite any technical aspect of doing so.” Ans. 8. In sum,
nothing in the claimed steps appear to be integrated into the structure of the
recited “processor,” “input device,” “electronic display,” and “memory
device.”
Thus, the recited limitations noted by the Appellant merely link the
recited abstract idea to the technological environment of a system having a
processor with a graphical user interface. We agree with the Examiner that,
as to the Appellant’s “analogous comparison to an exercise machine, the
claimed system is more correctly analogized to an exercise journal,” and that
“the claimed invention does not provide the ‘exercise’, but merely records
and organizes them.” Ans. 6, 10. We further agree with the Examiner that
“[t]he claimed invention is directed towards (mental) character strengths,
which exists and may be ‘exercised’ without the use of technology or the
claimed invention, and the claimed steps are either generic to technology or
lack a specific nonconventional algorithm for performing the steps.” Ans. 8;
see also Ans. 7–8 (“The claimed steps recite merely the high level function
or result of the function, without specific technical steps to achieve them,
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where the recitation is either a generic and well-known computing step, or
has analogue to mental steps . . ..”)
Therefore, we find that the claimed invention as a whole, is directed to
ineligible subject matter and does not integrate the abstract idea in the form
of mental processes in a technically meaningful manner into a practical
application. Claim 1 and its recitations link the use of the judicial exception
to a particular technological environment generally, which is insufficient to
establish integration of the exception into a practical application.
Accordingly, we proceed to Alice, Step 2.

Alice Step Two, Guidance Step 2B
In accordance with Alice, we now “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. The Appellant argues
that even if the claims are directed to an abstract idea, “the ordered
combination of the claims provide significantly more than any alleged
abstract idea” because “the ordered combination of assigning the ‘character
strengths’ to user entries, categorizing the entries as progress entries, and
outputting a celebration message, as recited in claims 1 and 12, further
enable the above-described improvement.” Reply Br. 7.
We do not find the Appellant’s assertion persuasive. Neither the
recited steps (individually and in their ordered combination), nor the
identified “character strengths,” add anything beyond the judicial exception
that is not “well-understood, routine, conventional” in the field so as to
transform the abstract nature of claim 1. In that regard, as the Examiner
points out, “[t]he specification recites that the claimed system may be
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implemented on a variety of commercially-available products, and fails to
describe how the claimed functions may be implemented beyond generic
computing functions such as receiving user input, performing actions based
on the input, data storage/manipulation, and output.” Ans. 9; see also Spec.
¶¶ 15, 16, 20, 21.
The Appellant responds that although the Specification identifies
illustrative examples of hardware and software, “merely stating that
‘illustrative logical blocks, modules, circuits, and algorithm acts’ or
‘illustrative logical blocks, modules, and circuits’ may be performed on the
above-recited systems and/or devices, does not imply that the recited steps
of the claims are well-understood, routine or conventional.” Reply Br. 9,
quoting Spec. ¶¶ 15, 16. However, the Appellant omits that the
Specification discloses what the “systems and/or devices” are and describes
their general use. In particular, the Specification discloses that the “various
illustrative logical blocks, modules, and circuits described in connection
with the embodiments disclosed herein may be implemented or performed
with a general purpose processor” and “[a] general purpose processor may
be a microprocessor, but in the alternative, the processor may be any
conventional processor.” Spec. ¶¶ 15, 16 (emphasis added). The point
being made by the Examiner is that the elements of the claims, as described
in the Specification, are “general” and “conventional,” and thus, well-
known, and that the Specification does not describe any uniqueness to the
disclosed elements. Therefore, these generic and conventional elements,
individually, and in their ordered combination, fail to “‘transform the nature
of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217.
The Appellant further argues that the Examiner analyzed the claims as
a synthesized summary that “is merely a high-level abstraction of the claims
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. . . untethered to the language of the claims, which basically ensures that the
claims are directed to a judicial exception.” Reply Br. 10. However, the
record indicates the contrary, the Examiner setting forth that:
The claimed steps recite merely the high level function or result
of the function, without specific technical steps to achieve
them, where the recitation is either a generic and well-known
computing step, or has analogue to mental steps ((e.g. display a
graphical user interface to the electronic display (generic
computing step); prompt the user to interact with the graphical
user interface [to generate data] (generic computing step); store
each entry generated by the user in a database stored in the
memory device (generic computing step); assign a user-selected
character strength to each entry (lacks specific steps of how the
assignation is performed, therefore is a generic computing step
or analogous to a mental step); categorize the entries as a
progress entry (lacks specific steps of how the categorization is
performed, therefore is a generic computing step or analogous
to a mental step); modify the database (generic computing
step); output a celebration message through the graphical user
interface (generic computing step) responsive to determining
improvement has been achieved regarding character strength
(lacks specific steps of how the determining is performed,
therefore is a generic computing step or analogous to a mental
step)).
Ans. 7–8.
The Appellant also argues that “[t]he specific list of character
strengths should be afforded patentable weight within any § 101 analysis
because the recited character strengths amount to at least functional
descriptive material,” and “were specifically chosen for the functional
purpose of improving a user physically, materially, mentally, and
spiritually.” Reply Br. 12–13. According to the Appellant, “it is at least the
combination of the character strengths with the specific system and
methodology for applying the specific character strengths to daily activities
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in an ongoing manner to enable a user to act as their own mediators for
improving their abilities and character through the monitoring, feedback, and
celebratory processes of the claims that affords the recited character
strengths patentable weight.” Reply Br. 13.
However, this does not adequately address the issue that the claim is
directed to an abstract idea as a whole, and those character strengths in
combination with the recited generic elements do not transform the nature of
the claim into a patent-eligible application. Indeed, these listed character
strengths, which were apparently chosen for the vague, but nonetheless
asserted, functional purpose of “improving a user physically, materially,
mentally, and spiritually” (Reply Br. 13), are themselves, abstract,
amorphous, and subjective in nature. Thus, although the Appellant further
asserts that “the list of character strengths is functionally linked with
assigning a character strength to each entry, modifying the database to
include the assignment, characterizing one or more entries as a progress
entry, and outputting messages based on progress with regard to the
character strengths” (Reply Br. 13), it is not apparent how such character
strengths, and any asserted functional link, alter the outcome of the Section
101 analysis.
Therefore, in view of the above, we discern no limitations in claim 1,
individually and as an ordered combination, that transform the abstract idea
of mental process into a patent-eligible application. Alice, 573 U.S. at 217.
Instead, claim 1 merely requires a general purpose/conventional processor
that is operated in a well-known manner for which it is designed. Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“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
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paper or in a person’s mind.”). 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 merely appends well-understood, routine,
conventional activities, specified at a high level of generality, to the judicial
exception. See Guidance.
Accordingly, the Examiner’s rejection of independent claim 1 is
affirmed. Moreover, because the Appellant argues all of the claims together,
the Examiner’s rejection of these remaining claims is likewise affirmed.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–17,
19, 21, 22
101 Eligibility 1, 2, 4–17,
19, 21, 22

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).
AFFIRMED