Baxter D. MontgomeryDownload PDFPatent Trials and Appeals BoardOct 9, 201912710346 - (D) (P.T.A.B. Oct. 9, 2019) 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. 12/710,346 02/22/2010 Baxter D. Montgomery BAXT0001 8491 65134 7590 10/09/2019 Ari Pramudji Pramudji Law Group PLLC 800 Gessner, Suite 975 Houston, TX 77024 EXAMINER SAINT-VIL, EDDY ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 10/09/2019 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): ari.pramudji@pro-ip.com monica.owens@pro-ip.com paralegal@pro-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BAXTER D. MONTGOMERY ____________________ Appeal 2019-002440 Application 12/710,3461 Technology Center 3700 ____________________ Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s rejection of claims 1–4, 6, 7, 9–11, 14, 15, and 17–29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention “relate[s] to classifying foods into food categories based on their nutritional characteristics.” Spec. ¶ 2. Below, we reproduce independent claim 1 as illustrative of the appealed claims. 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 Baxter D. Montgomery. Appeal Br. 3. Appeal 2019-002440 Application 12/710,346 2 1. A method, comprising: receiving a description of a food; determining whether the food is non-animal-based or animal-based; determining an extent in which the food is processed; determining one or more nutritional characteristics of the food; determining an origin of the food; determining one or more possible effects of the food on a human body; categorizing, using a microprocessor, the food to one of a plurality of food level numbers based on whether the food is non- animal-based or animal-based, the extent of processing, the nutritional characteristics, the origin, and the possible effects on the human body, wherein categorizing the food comprises: categorizing the food in Food Level 0 if the food is non-animal-based and juiced, blended, or steeped in water as a tea at a temperature less than 100°F; categorizing the food in Food Level 1, 2 or 3 if the food is ripened, chopped, minced, frozen, or pureed; categorizing the food in Food Level 4 if the food is warmed, dried or dehydrated at a temperature less than 155°F, steamed for less than 4 minutes or boiled for less than 10 minutes; categorizing the food in Food Level 5 if the food is warmed, dried or dehydrated at a temperature between 155°F and 200°F, steamed for a duration between 4 minutes and 10 minutes or boiled for a duration between 10 minutes and 45 minutes; categorizing the food in Food Level 6 if the food is baked and has up to 20% fat per unit serving, if the food is warmed, dried or dehydrated at a temperature that is greater than 200°F, steamed for more than 10 minutes or boiled for more than 45 minutes; Appeal 2019-002440 Application 12/710,346 3 categorizing the food in Food Level 7 if the food is an animal-based food that is a type of fish excluding shellfish, catfish or fish with substantial levels of contaminants that is raw, lightly steamed or poached for less than 8 minutes or a non-animal-based food that has been baked and has greater than 20% fat per unit serving, has been jarred, poached, canned, or combined with one or more natural additives; categorizing the food in Food Level 8 if the food is an animal-based food that is a wild game meat, a type of fish excluding shellfish, catfish or fish with substantial levels of contaminants that has been lightly steamed or poached for more than 8 minutes or a non-animal-based food that has been grilled, includes carbohydrates with white flour/rice, or has one or more natural components removed from the non-animal-based food; categorizing the food in Food Level 9 if the food includes domestically raised animals excluding beef and pork, all other types of fish, or one or more dairy- processed foods or includes non-animal-based foods that have been sautéed, stir-fried, fried, or microwaved; and categorizing the food in Food Level 10 if the food is not categorized in any other Food Level; and displaying the one of the plurality of food level numbers on a display device. REJECTION The Examiner rejects claims 1–4, 6, 7, 9–11, 14, 15, and 17–29 under 35 U.S.C. § 101 as reciting only patent-ineligible subject matter. PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101 An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Appeal 2019-002440 Application 12/710,346 4 Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions, however: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted). In determining whether a claim falls within an excluded category, the Supreme Court’s two-step framework, described in Mayo and Alice, guides us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” Id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts that the courts determined to be abstract ideas—and, thus, patent ineligible—include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts that the courts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2019-002440 Application 12/710,346 5 In Diehr, although the claim at issue recited a mathematical formula, the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Nonetheless, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “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. (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. Appeal 2019-002440 Application 12/710,346 6 2019 Revised Patent Subject Matter Eligibility Guidance The U.S. Patent and Trademark Office recently published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). 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 i) a fundamental economic practice, or ii) managing personal behavior or relationships or interactions between people, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan. 2018)). A practical application “appl[ies], rel[ies] on, or use[s] 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.” Guidance at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim either: (3) adds a specific limitation beyond the judicial exception which is not “well-understood, routine, [or] conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See generally Guidance. Appeal 2019-002440 Application 12/710,346 7 ANALYSIS Initially, we note that Appellant argues against the Examiner’s § 101 rejection of the claims as a group. See Appeal Br. 29–34. We choose independent claim 1 for our analysis, and the remaining independent and dependent claims stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(1)(iv). For the following reasons, we sustain the Examiner’s rejection of the claims as patent-ineligible. We determine that in accordance with point (1) of the Guidance referenced above, independent claim 1 recites at least one judicial exception, including an abstract idea. More specifically, as described in further detail, the abstract idea includes mental concepts. As reproduced above, claim 1 recites a method comprising the following: (1) “receiving a description of a food”; (2) “determining whether the food is non-animal-based or animal-based”; (3) “determining an extent in which the food is processed”; (4) “determining one or more nutritional characteristics of the food”; (5) “determining an origin of the food”; (6) “determining one or more possible effects of the food on a human body”; (7) “categorizing, using a microprocessor, the food to one of a plurality of food level numbers based on whether the food is non-animal-based or animal- based, the extent of processing, the nutritional characteristics, the origin, and the possible effects on the human body, wherein categorizing the food comprises”: (7a) “categorizing the food in Food Level 0 if the food is non- animal-based and juiced, blended, or steeped in water as a tea at a temperature less than 100°F”; “(7b) “categorizing the food in Food Level 1, 2 or 3 if the food is ripened, chopped, minced, frozen, or pureed”; (7c) “categorizing the food in Food Level 4 if the food is warmed, dried or Appeal 2019-002440 Application 12/710,346 8 dehydrated at a temperature less than 155°F, steamed for less than 4 minutes or boiled for less than 10 minutes”; (7d) “categorizing the food in Food Level 5 if the food is warmed, dried or dehydrated at a temperature between 155°F and 200°F, steamed for a duration between 4 minutes and 10 minutes or boiled for a duration between 10 minutes and 45 minutes”; (7e) “categorizing the food in Food Level 6 if the food is baked and has up to 20% fat per unit serving, if the food is warmed, dried or dehydrated at a temperature that is greater than 200°F, steamed for more than 10 minutes or boiled for more than 45 minutes” (7f) “categorizing the food in Food Level 7 if the food is an animal-based food that is a type of fish excluding shellfish, catfish or fish with substantial levels of contaminants that is raw, lightly steamed or poached for less than 8 minutes or a non-animal-based food that has been baked and has greater than 20% fat per unit serving, has been jarred, poached, canned, or combined with one or more natural additives”; (7g) “categorizing the food in Food Level 8 if the food is an animal-based food that is a wild game meat, a type of fish excluding shellfish, catfish or fish with substantial levels of contaminants that has been lightly steamed or poached for more than 8 minutes or a non-animal-based food that has been grilled, includes carbohydrates with white flour/rice, or has one or more natural components removed from the non-animal-based food”; (7h) “categorizing the food in Food Level 9 if the food includes domestically raised animals excluding beef and pork, all other types of fish, or one or more dairy-processed foods or includes non-animal-based foods that have been sautéed, stir-fried, fried, or microwaved,” and (7i) “categorizing the food in Food Level 10 if the food is not categorized in any other Food Level”; and (8) “displaying the one of the plurality of food level numbers on Appeal 2019-002440 Application 12/710,346 9 a display device.” Appeal Br., Claims App. (Claim 1). Claim recitations (2)–(6) are determinations that a person may accomplish in his or her mind. For example, a person may read a package label and apply his or her understanding to determine whether a food is animal-based or not, whether the food is processed, and whether the food provides various nutritional characteristics such as vitamins or minerals. The person may read from the food package label where the food was produced. The person may use his or her knowledge, and determine what effects consuming the food may have on his or her body. Further, aside from the express recitation of a processor, claim recitations (7) and (7a)–(7i) otherwise may be done by a person in his or her mind. In particular, the person may make the determinations discussed above for a certain food, and mentally categorize the food in one or more of Food Levels 1–10 as specifically set forth in claim recitations (7a)–(7i). By way of a more specific example, a person may read a package label for a juice which indicates that the juice is non- animal based, and was juiced at a temperature of less than 100°F, and the person may subsequently characterize, in his or her mind, the juice as Food Level 0 for the reasons set forth in claim recitation (7a). The courts have recognized mental steps, such as those identified above, as abstract ideas. See Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (collecting information and “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”); see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (finding a claim that is directed to “a method that can be performed by human thought alone is merely an abstract Appeal 2019-002440 Application 12/710,346 10 idea and is not patent-eligible under § 101”); see In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human thinking—standing alone are not patentable even if they have practical application.”); see Gottschalk v. Benson, 409 U.S. at 67 (“Phenomena of nature, . . . mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Additionally, mental processes may remain unpatentable even when automated to reduce the burden on the user. CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). Accordingly, we conclude that claim 1 recites a judicial exception of mental processes. In accordance with point (2) of the Guidance referenced above, claim 1 does not recite any additional element that integrates the judicial exception into a practical application—i.e., something that “appl[ies], rel[ies] on, or use[s] 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.” Guidance at 54. The claim only generically recites the use of certain physical hardware—a microprocessor and a display device—and, thus, these components do not meaningfully limit the claim. Further, in the Specification, Appellant does not describe the claimed hardware in such a way as to indicate that the hardware is anything other than generic. See, e.g., Spec. ¶ 21 (“Implementations of various technologies described herein may be operational with numerous general purpose or special purpose computing system environments or configurations. Examples of well[-]known Appeal 2019-002440 Application 12/710,346 11 computing systems, environments, and/or configurations that may be suitable for use with the various technologies described herein include, but are not limited to, personal computers, server computers, hand-held or laptop devices, multiprocessor systems, microprocessor-based systems, set top boxes, programmable consumer electronics, network PCs, minicomputers, mainframe computers, distributed computing environments that include any of the above systems or devices, and the like.”); id. ¶ 28 (“A monitor 47 or other type of display device may also be connected to system bus 23 via an interface, such as a video adapter 48.”). Thus, claim 1 does not affect an improvement in any technology or technical field. Therefore, claim 1 is directed to the above-discussed abstract idea, and does not integrate the judicial exception into a practical application. In accordance with points (3) and (4) of the Guidance referenced above, claim 1 fails to recite a specific limitation beyond the judicial exception which is not well understood, routine, and conventional in the field, but instead simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Taking the claim elements separately, the claimed hardware, as well as the functions performed by the claimed hardware, are purely conventional. Specifically, claim 1 uses known, generic components to perform their known, basic functions. Although, arguably, the data processed and displayed differs, the claim recites the microprocessor and display device only at a high level of generality. In other words, here the claim recites only well-understood, routine, and conventional functions. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639 F.3d 1303, 1316 (Fed. Appeal 2019-002440 Application 12/710,346 12 Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). For the following reasons, when considered as an ordered combination, claim 1’s hardware does not add anything that is not already present when we consider the steps separately. The microprocessor and display device remain the same before, during, and after display of the Food Category level. Thus, the claim amounts to nothing significantly more than instructions to apply the abstract idea with generic hardware, and does not improve the microprocessor or display device. Accordingly, the claim recitations are insufficient to transform the abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 225–26. We have considered all of Appellant’s arguments in the Briefs, but Appellant does not persuade us of error. We now address certain arguments below. We are not persuaded of error by Appellant’s argument that the claims “do not seek to tie up the abstract concept of categorizing food such that other cannot practice this concept.” Appeal Br. 31. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Rather, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in Appeal 2019-002440 Application 12/710,346 13 this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. We are not persuaded by Appellant’s argument that, based on the Affidavits of Dr. Baxter Montgomery, the claimed method “ha[s] been ‘successfully implemented in thousands of individuals with various chronic illnesses,’” and “resulted in the improved health of patients.” Appeal Br. 31–32; see also id. at 31–33. Successful implementation of an abstract idea does not make the idea non-abstract. We are not persuaded by Appellant’s argument that the claims are similar to those at issue in Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Appeal Br. 33. In Amdocs, the Federal Circuit held the claim patent-eligible because it “entail[ed] an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Amdocs, 841 F.3d at 1300. “The solution require[d] arguably generic components, including network devices and ‘gatherers’ which ‘gather’ information.” However, the court concluded that these generic components provided an enhancing limitation for specifying how the data is processed before placement in a database. Id. at 1301. The court further concluded that this “enhancing limitation necessarily require[d] that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–01. In the present case, however, Appellant’s claim 1 does not address a technological problem, and therefore does not provide a technological solution to such a problem. Appeal 2019-002440 Application 12/710,346 14 We are not persuaded of error by Appellant’s argument that the claims, in accordance with Berkheimer v. HP Inc., 881 F.3d 1369 (Fed. Cir. 2018), recite eligible subject matter, because the Examiner failed to demonstrate that the claims recite methods that are well understood, routine, and conventional, as the Examiner provides no factual support. Appeal Br. 34. It is not relevant whether the abstract idea itself is well understood, routine, and conventional, but rather “whether the additional elements amount to significantly more than the exception itself.” Guidance at 56. The elements recited in claim 1, beyond the scope of the abstract idea, are only reciting the use of a microprocessor and display device. As we discuss above, there is no indication that this hardware is anything other than generic, whose operation within the scope of the claim steps is merely well understood, routine, and conventional. This is because operations such as categorizing and displaying are basic computer operations found in many computer systems. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d at 1316. Therefore, based on the foregoing, we sustain the Examiner’s § 101 rejection of independent claim 1. Inasmuch as the remaining claims under appeal stand or fall with claim 1, we also sustain the rejection of claims 2–4, 6, 7, 9–11, 14, 15, and 17–29. Appeal 2019-002440 Application 12/710,346 15 CONCLUSION We AFFIRM the Examiner’s rejection of claims 1–4, 6, 7, 9–11, 14, 15, and 17–29 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–4, 6, 7, 9–11, 14, 15, 17–29 101 1–4, 6, 7, 9–11, 14, 15, 17–29 Overall Outcome 1–4, 6, 7, 9–11, 14, 15, 17–29 AFFIRMED Copy with citationCopy as parenthetical citation