Ex Parte Berg et al

Patent Trial and Appeal Board

Feb 16, 2018

12726658 (P.T.A.B. Feb. 16, 2018)

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.
12/726,658 03/18/2010 Charles John Berg JR. 10562MXC 1702
27752 7590 02/21/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JOHN BERG JR.,
DAVID KEITH EWART, and
NICK ROBERT HARRINGTON
Appeal 2016-008453
Application 12/726,658
Technology Center 3600
Before JEAN R. HOMERE, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—16, which are all of the pending claims. (App.
Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify The Proctor & Gamble Company as the real party in
interest. (Br. 1.)
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Application 12/726,658
STATEMENT OF THE CASE
Introduction
According to Appellants, “[t]he present invention relates generally to
methods for measuring emotive response and selection preference in
situations involving at least one visual stimulus and product usage or
selection.” (Spec. 1:11—13.) By way of background, Appellants’
Specification describes “consumer analysis models” that may be used to
study bases for consumer selection of products to purchase. {Id. at 1 4.)
According to Appellants, “there is a need for systems and methods for
measuring emotive response and selection preference that can provide
accurate consumer feedback, whether conscious or subconscious, relating to
a company’s products for purposes of conducting consumer research, such
as for shopping, usage analysis, and product beneficiary analysis.” {Id. at
3:27—30.) Appellants’ Specification purports to describe a method and
apparatus for satisfying this need, in which, for example, consumers look
into what appears to be a mirror (a “visual stimulus” that includes the image
of the consumer flipped to be displayed back to the consumer), and the
consumers’ “eye-tracking data” is captured and stored for analysis by
researchers:
[T]he methods of the present invention may also contemplate . . .
an image flipper, e.g., to allow a mirror video image to be
displayed, [which] can be used to better understand the personal
hygiene and beauty tasks of a consumer. For example, the
consumer’s own image is captured by video and displayed back
to the consumer in real-time onto a visual screen {e.g., video
monitor) after image flipping such that it appears to the consumer
that they are viewing themselves in a physical mirror. Eye­
tracking apparatus concurrently capture[s] eye-tracking data and
optionally biometric data is obtained and is typically not
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displayed in the image provided to the consumer, but is preserved
for viewing by the researcher later. In this embodiment, the
researcher can observe in real-time or later where the consumer
is looking as they apply skin care, hair care, cosmetics, and other
products to their body or face, or perform tasks such as shaving
and oral hygiene.
(Id at 38:27-39:6.)
Exemplary Claim
Claims 1, 7, and 14 are independent. Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A method of obtaining consumer research data comprising
the steps:
(a) capturing an image of a consumer;
(b) flipping the captured image along a vertical axis;
(c) presenting a visual stimulus to a consumer, wherein the visual
stimulus comprises the vertically flipped image of the consumer;
(d) collecting eye gazing data from the consumer while
presenting the visual stimulus to the consumer.
Rejection
Claims 1—16 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. (Final Act. 2-4.)
ANALYSIS
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012). The Supreme Court has set forth an
analytical “framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts.” Alice Corp. v. CLS Bank Inti, 134 S. Ct.
2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71—73 (2012)). In the first step of the analysis, we
determine whether the claims at issue are “directed to” a judicial exception,
such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends.
Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an “inventive concept” sufficient to
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quotations and citation omitted).
Noting that “the two stages involve overlapping scrutiny of the
content of the claims,” the Federal Circuit has described “the first-stage
inquiry” as “looking at the ‘focus’ of the claims, their ‘character as a
whole,”’ and “the second-stage inquiry (where reached)” as “looking more
precisely at what the claim elements add—specifically, whether, in the
Supreme Court’s terms, they identify an ‘inventive concept’ in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
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the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Here, in rejecting the pending claims under § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Final Office Action was mailed. (See Final Act. 2-4.)
Addressing the first step, the Examiner finds:
[T]he concept of capturing an image of a customer, flipping that
image along an axis, presenting the flipped image back to the
consumer, collecting information regarding the consumer... [is]
directed towards methods of organizing human activities, which
is an example identified by the courts as an abstract idea.
(Final Act. 3.)
Appellants argue the Examiner’s rejection is in error because “[t]he
steps of the method and the elements of the apparatus are directed toward
capturing moments of human existence but cannot be accurately categorized
as organizing behavior.” (Br. 4.) Appellants’ argument appears to be
premised on the contention that “[n]one of the claimed steps are conducted
by a human or associated with the organization of human behavior.” (Id.)
We disagree. As the Examiner finds, and we agree, “the claims do not
specify who or what is performing the steps.” (Ans. 4.) It is, therefore, not
unreasonable to construe the steps as being carried out by a human with pen
and paper. (See id.) As the Examiner further finds, and we agree:
The claims are directed to stimulus generation and data
gathering. The stimulus, i.e., the flipped image, is provided to
provoke a subconscious or psychological response, thus, a
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mental process is claimed further supporting Examiner’s stance
that the claims are directed to an abstract idea similar to [“]an
idea of itself. [”] This physiological or subconscious response
may also be viewed as [“Jmanaging human behavior[.”] In
addition, the process is ultimately performed to gather consumer
research data and therefore similar to concepts within
[“Jorganizing human activity[”] such as advertising, marketing
and sales.
(Id.)
With regard to independent claim 14, which recites an “apparatus for
capturing consumer behavior” comprising multiple “element[s]” recited for
performing each of the steps as similarly recited in method claim 1 (Br. 7—8
(Claims App’x)), Appellants argue:
These claims are directed toward apparatus and are therefore
outside the Court’s analysis in Alice, as they are not directed
toward a method or limited to software operating on a general
purpose computer, as a general purpose computer lacks the
required capacity to capture and present images, or to capture
biometric data since functions such as these require specialized
hardware and cannot be achieved solely by the execution of
software coded in the memory and processor of any known
general purpose computer system.
(Br. 5.)
We disagree. As the Examiner correctly notes, “a general purpose
computer can present images.” (Ans. 5.) Appellants also overstate their
claims as being limited to requiring “specialized hardware.” Not only do
Appellants’ claims not expressly recite any specialized hardware, but
Appellants’ Specification broadly describes the apparatus that may be used
according to the claims. For example, Appellants’ Specification states that
“imaging apparatus” is being “used in the broadest sense” and notes that the
“images can be presented or displayed via light imaging techniques and
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displayed for viewing by the consumer on a computer monitor . . . (Spec.
9:6, 9:13—14.) Appellants’ Specification also describes image capturing
apparatus as including “video” that may be displayed on a “video monitor.”
(Spec. 38:32—33.) Although Appellants’ Specification also describes
specialized apparatus, such as for eye-tracking (Spec. 25:3—8), Appellants’
claims are not limited to any particular apparatus for performing such
function. Claim 14 in particular, broadly recites an “eye-tracking element
disposed to capture consumer eye-tracking data as the consumer views the
displayed image” (Br. 8 Claims App’x)), which could include simply a
human observing the eye movement of a consumer and recording the
observations with a pen and paper, as the Examiner notes. (See Ans. 4—5.)
We further note that Appellants incorrectly characterize the law in
suggesting that the recitation of apparatus necessarily takes the claims
outside the scope of Alice. We note, in particular, that our reviewing court
has repeatedly confirmed since Alice that the category of “abstract ideas”
includes data gathering, manipulation, and output, even if the claims also
recite tools to gather and manipulate data. See, e.g., Electric Power Grp.,
830 F.3d at 1354. In Electric Power Group, for example, the claims recited
steps of receiving measurements, recording data pertaining to those
measurements, and manipulating and displaying that data. Id. at 1351—52.
The Federal Circuit agreed that the claims were directed to an abstract idea
of “collecting information, analyzing it, and displaying certain results of the
collection and analysis,” even though the claims required use of various
devices to take the measurements, to manipulate the data, and to display it.
Id. at 1353—54. The court reasoned:
[T]he claims are clearly focused on the combination of those
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Application 12/726,658
abstract-idea processes. The advance they purport to make is a
process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular
assert[edly] inventive technology for performing those functions.
They are therefore directed to an abstract idea.
Id. at 1354. Similarly, here, Appellants’ broadly claiming “element[s]” to
capture images, manipulate them, and display them does not render
Appellants’ claimed invention less abstract.
In short, Appellants have not provided persuasive analysis or rationale
to rebut the Examiner’s findings and conclusions that the claims are directed
to an abstract idea. Thus, at step one of the analysis, we are not persuaded
that the Examiner erred in determining that the claims are directed to patent-
ineligible subject matter.
Step Two: Whether Additional Elements Transform The Idea Into
Patent-Eligible Subject Matter
Having found that the claims are directed to an abstract idea, the
Examiner also finds that the additional elements or combinations of
elements beyond the abstract idea do not amount to “significantly more”
than the abstract idea itself. (Ans. 3—4.) In particular, the Examiner finds,
and we agree, “the claims, when considered as a whole, are nothing more
than the instruction to implement the abstract idea in a well-understood,
routine and conventional technological environment.” {Id. at 4.)
Appellants do not address step two of the Alice analysis separately
from step one, but argue generally, as noted above, that the method claims
recite “tangible actions” and that the apparatus claims recite more than
“software operating on a general purpose computer.” (Br. 4—5.) We
disagree. As noted above, Appellants’ claims are not, as Appellants assert,
limited to specialized hardware, but broadly recite steps or elements for
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gathering, manipulating, and displaying data. As our reviewing court
explained in Electric Power Group, “merely selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based category of
abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claims 1, 7, and 14 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter, or in rejecting on the same basis
dependent claims 2—6, 8—13, 15, and 16, which Appellants do not argue
separately. (Br. 2.)
DECISION
For the above reasons, the Examiner’s rejection of claims 1—16 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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