Anouk Charlotte. O'Prinsen et al.

Patent Trials and Appeals Board

Jul 2, 2020

2019002579 (P.T.A.B. Jul. 2, 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.
13/501,311 04/11/2012 Anouk Charlotte O'Prinsen 2009P01512WOUS 7969
24737 7590 07/02/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANOUK CHARLOTTE O’PRINSEN and XI CHEN
Appeal 2019-002579
Application 13/501,311
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
MARTIN, 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 1–14. 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. Appellant identifies the real party in interest as Koninklijke Philips
N.V. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to the determination of a training plan, and
particularly to the selection of exercises intended to be done by users. Spec.
1, ll. 4–5. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A non-transitory information medium storing a program
which is loaded and executable by at least one data processing
device to implement a method of selecting exercises from a
plurality of exercises for a user, each of said plurality of exercises
being associated with a set of characteristics, and each
characteristic of said set of characteristics being associated with
a set of categories for classifying said plurality of exercises, the
method comprising:
obtaining first quantitative inputs reflecting answers to a
first set of questions related to a first characteristic among said
set of characteristics, wherein said answers to the first set of
questions reflect information of said user;
selecting a first subset of categories from the set of
categories based on a comparison of the first quantitative inputs
to a first predefined criteria; and
determining a first set of exercises from the plurality of
exercises based on said selected subset of categories.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Gordon US 2004/0220017 A1 Nov. 4, 2004
Mummy US 7,335,167 B1 Feb. 26, 2008

REJECTIONS
Claims 1–14 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 2.
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Claims 1–14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mummy and Gordon. Ans. 4.

OPINION
Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If this initial
condition is met, we then move to the second step, in which 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.” Id. at 217 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78
(2012)). The Supreme Court describes the second step 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.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84
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Fed. Reg. 50 (Jan. 7, 2019).2 Under that guidance, 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 activity such as a fundamental economic practice, and
mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, under “Step 2B,” to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See generally Guidance.

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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ANALYSIS
Claim Grouping
Appellant argues the independent claims as a group for the purpose of
the rejection under a judicial exception to § 101. Appeal Br. 10‒14. As to
this rejection, we select claim 1 as representative of the group, and the
remaining independent claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner rejects the claims,
stating that the claims are drawn to the abstract idea of “data collection,
analysis, and display.” Ans. 3. The Examiner further explains “that the
determining step can be performed . . . purely mentally or by pen or pencil.”
Ans. 9. In this regard, the claims amount to using a computer merely for
improved/faster processing of data that could otherwise be done by a human
without a computer. At Alice step 2, the Examiner additionally determines
that the claims do not add a meaningful limitation to the abstract idea so as
to amount to significantly more than the judicial exception because they
implement the abstract idea on generic processors that perform generic
computer functions. Ans. 2.
Analysis According to the Guidance
Step One: Does Claim 1 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
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Claim 1 is drawn to a non-transitory medium storing a program which can
be executed to implement a method, which is one of the statutory classes
(i.e., a manufacture) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, and mental processes.
In this instance, claim 1 recites steps that amount to mental processes
and/or certain methods of organizing human activity by managing personal
behavior involved in determining a training plan. Specifically, the claim
recites:
obtaining first quantitative inputs reflecting answers to a
first set of questions related to a first characteristic among said
set of characteristics, wherein said answers to the first set of
questions reflect information of said user;
selecting a first subset of categories from the set of
categories based on a comparison of the first quantitative inputs
to a first predefined criteria; and
determining a first set of exercises from the plurality of
exercises based on said selected subset of categories.

Although these steps are claimed as being on a non-transitory storage
medium for storing a program to be run by a computer, the activities
themselves are all capable of being performed by a human without a
computer, and fall into the abstract idea of mental processes. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
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performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”); see id. at 1372–73 (holding that constructing and
using a map of credit card numbers recited a mental process performable in
the human mind); In re Villena, 745 F. App’x 374, 375–76 (Fed. Cir. 2018)
(holding that claims to generating a map-like display for a geographic region
with icons of residential properties and their values recited an abstract idea).
We, therefore, determine that claim 1 recites at least the abstract idea
of mental processes, which is a judicial exception to patent-eligible subject
matter.
Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that
Integrate the Judicial Exception into a Practical Application?
Following our Office guidance, having found that claim 1 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted
above, each of the claimed steps is recited as being performed by a computer
device specified at a high level of generality and, does not result in an
improvement in the functioning of a computer or other technology or
technological field. The recitations of the generic structures with which the
recited steps are performed are merely instructions to use a generic computer
system as a tool to perform the abstract idea. Thus, claim 1 does not apply,
rely on, or use the abstract idea in a manner that imposes a meaningful limit
on those steps. Rather, the claim is simply a drafting effort designed to
monopolize the abstract idea steps of claim 1. See MPEP § 2106.05(f) (“Use
of a computer or other machinery in its ordinary capacity for . . . tasks (e.g.,
to receive, store, or transmit data) or simply adding a general purpose
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computer or computer components after the fact to an abstract idea . . . does
not provide significantly more.”).
In short, the additional elements discussed above: (1) do not result in
an improvement to the functioning of a computer or other technology;
(2) are not any particular machine; (3) do not effect a transformation of a
particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–
(h); Guidance, 84 Fed. Reg. at 55. Consequently, the claimed invention does
not integrate the abstract idea into a “practical application.”
For these reasons, the additional elements of claim 1 do not integrate
the judicial exception into a practical application. Thus, claim 1 is directed
to an abstract idea, which is a judicial exception to patent-eligible subject
matter under 35 U.S.C. § 101.
Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any additional elements,
individually or as an ordered combination, that transform the abstract idea
into a patent-eligible application, e.g., provide an inventive concept. Alice,
573 U.S. at 217–18. Claim 1 consists wholly of steps that recite abstract
ideas that are performed by a generic computer and thus does not recite any
such additional elements.
According to Office guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step
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of the inquiry (Step 2B) looks at the additional elements in combination.
See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
As noted above, the computer is invoked as a conventional tool to run
the program stored on the storage medium. Apart from being used to
perform the abstract idea itself, the generic computer system components
only serve to perform well-understood functions (e.g., obtaining, receiving,
repositioning, transmitting, etc.). See FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter.”). In our view,
claim 1 fails to add a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field, but instead “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, 84 Fed. Reg. at 56. That is, claim 1 is not
directed to a specific application designed to achieve an improved
technological result, as opposed to being directed to merely ordinary
functionality of the above-recited additional elements to apply an abstract
idea. For the reasons discussed above, we find no additional element, alone
or in combination, recited in claim 1 that contains any “inventive concept”
or adds anything “significantly more” to transform the abstract concept into
a patent-eligible application. See Alice, 573 U.S. at 221.

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Appellant’s Contentions
Appellant first contends that the claims are “synonymous with the
patentable implementation of the technical solution/improvements of the
patentable claims . . . as set forth in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).” Reply Br. 15. The
Examiner is correct, however, that the “collective functions merely provide
conventional computer implementation” and that “the alleged benefit results
from an increased speed due to computer processing and not the claimed
invention.” Ans. 4, 9. As noted above, the claims merely recite a program
for performing a series of steps that otherwise can be performed as mental
processes. As such, there is no technological improvement involved in the
claims.
Appellant also asserts that “determining a first set of exercises from
the plurality of exercises based on said selected subset of categories . . .
cannot be performed mentally or by a human using a pen and paper . . .
because it is very time-consuming and hardly possible to be done manually.”
Appeal Br. 10–11. As the Examiner explains, however, “the claimed
limitations merely require [a] small set of data and classification, ex. two or
three, which can be surely performed [] mentally or by pen or pencil.” Ans.
9. Even if the calculation were to involve more than two or three in the data
set(s), Appellant has provided no evidence that the calculations could not be
performed by a human. We do not doubt that the calculation could get more
complicated, but this merely means that the calculation may take longer and
the only improvement is the improved speed of performing the method on a
computer. Accordingly, we are not persuaded that the claims are directed to
statutory subject matter and sustain the Examiner’s rejection.
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Obviousness
We first note, in arguing the Examiner’s obviousness rejection,
Appellant mostly quotes claim language and asserts that either Mummy or
Gordon fails to teach the claim language without any explanation as to why.
See, e.g., Appeal Br. 19–29. Merely reciting the language of the claims and
asserting that the prior art reference or combination does not disclose or
teach each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
We also note that the Examiner is correct in response to many of Appellant’s
arguments regarding Gordon that “Mummy teaches the claimed limitation so
Gordon is not required to teach the claimed limitation.” See, e.g., Ans. 19,
20, 21, 23.
In summary, the Examiner essentially finds that Mummy teaches all
of the claimed limitations except that Mummy fails to teach collecting data
based upon a patient’s answers to questions. See Ans. 4–6. The Examiner
then finds that “Gordon discloses [a] method and system for generating an
exercise program . . . comprising evaluations and measures compris[ing]
answers to a first set of questions.” Ans. 6 (citing Gordon ¶ 16, Figs. 2, 5).
The Examiner then finds that it would have been obvious to modify Mummy
to obtain data via a questionnaire as taught in Gordon “to provide
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customized exercise more efficiently with detailed input.” Id. (citing
Gordon ¶ 7).
Appellant argues that Mummy fails to teach “selecting the iliac crest
category over the PSIS-ASIS differential category and the scapulae
evaluation category based on a second predefined criteria.” Appeal Br. 22.
As the Examiner states, however, “Appellant[] appear[s] to confuse between
categories and characteristics associated with the categories.” Ans. 14. The
Examiner further explains, and we agree, “that the iliac crest, PSIS-ASIS
and Scapulae Elevation are measurement methods (col. 7, ll. 20–26) and
measured values are compared to select the subset categories but not the
categories themselves as claimed.” Id. In other words, Appellant’s
arguments are not directed to elements that are actually claimed. The
Examiner correctly explains how each portion of Mummy aligns with the
claim language and we see no error in the Examiner’s application of
Mummy to the claims. Ans. 4–6.
As to the dependent claims, Appellant merely relies on the arguments
with respect to claims 1 and 9 and does not present separate arguments for
the remaining claims. See, e.g., Reply Br. 29–34.

CONCLUSION
The Examiner’s rejections are AFFIRMED.
More specifically,
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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
1–14 101 Eligibility 1–14
1–14 103 Mummy, Gordon 1–14
Overall
Outcome
  1–14

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