Ex Parte Bovard et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813743809 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/743,809 01/17/2013 26875 7590 08/31/2018 WOOD, HERRON & EV ANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Christopher C. Bovard 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 ATTORNEY DOCKET NO. CONFIRMATION NO. HILB-877US 9116 EXAMINER GARG, YOGESH C ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER C. BOVARD, PAUL HOLZMAN, DANIEL G. MEISER, ILIJA ROJDEV, and CHRISTOPHER M. WESSEL Appeal2017-004194 Application 13/743,809 Technology Center 3600 Before JAMES R. HUGHES, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-004194 Application 13/743,809 STATEMENT OF THE CASE Introduction Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-20. Claims 21-36 were withdrawn in response to a restriction requirement. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Appellants' disclosed invention relates to merchandising and personalizing caskets at the point of purchase. Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of merchandising caskets by a casket seller at the point of purchase of a casket purchaser comprising: displaying a plurality of untrimmed caskets from which the purchaser may select, each casket of the plurality of caskets being of a different material, color, or design, displaying a plurality of packaged casket interior trim component sets from which the purchaser may select, each set of the plurality of sets containing trim components being of a different material, color, or design, and installing the casket interior trim components of the purchaser selected set into the purchaser selected casket. The Examiner's Rejections Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 1 According to Appellants, the real party in interest is Batesville Services, Inc. App. Br. 4. 2 Appeal2017-004194 Application 13/743,809 Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Riga (US 7,107,222 B 1, issued Sept. 12, 2006), Calhoun et al. (US 6,742,231 Bl, issued June 1, 2004), and Official Notice. ANALYSIS Patent-Ineligible Subject Matter Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355. Assuming that a claim nominally falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 23 55-57. If the claim is directed to a judicial exception, such as an abstract idea, the second step is to determine whether additional 3 Appeal2017-004194 Application 13/743,809 elements in the claim "'transform the nature of the claim' into a patent- eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This second step is described as "a search for an "'inventive concept"'-i.e., an element or combination of elements that is ' ... significantly more than ... the [ineligible concept] itself."' Id. at 23 55 ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). Appellants contend the method of independent claim 1 cannot be performed in the human mind, and further contend the method is not patent ineligible simply because it can be performed manually. See App. Br. 10- 11. According to Appellants, "whether or not the steps 'can be perceived mentally' is of no moment-the claims call for the steps to actually be performed'' because a "selected untrimmed casket is physically transformed by installing the casket interior trim components," and Appellants are "not required to recite 'computers' or 'tools' to satisfy 35 U.S.C. 101." Reply Br. 4--5. We are not persuaded by Appellants' arguments. Neither question of whether a claimed method includes mental processes or includes manual steps is alone dispositive of patent eligibility. Rather, the two step inquiry for determining patent eligibility, as stated above, asks whether a claim is directed to a patent-ineligible concept----e.g. an abstract idea-and if so, whether the claim includes an inventive concept that is significantly more than the patent-ineligible concept itself. See Alice, 134 S.Ct. at 2355. Here, the Examiner finds claim 1 is directed to the abstract idea of merchandising caskets at the point of purchase. See Final Act. 8; Ans. 3--4. Appellants have not specifically and persuasively argued the Examiner erred in identifying the abstract idea embodied by claim 1. Accordingly, even if we agreed with Appellants that claim 1 does not 4 Appeal2017-004194 Application 13/743,809 embody a solely mental process (see App. Br. 10), Appellants have not shown the Examiner erred in finding claim 1 is directed to the idea of merchandising caskets, and that merchandising caskets is an abstract idea. Further, the Examiner finds claim 1 does not include significantly more than the abstract idea itself. See Final Act. 9; Ans. 4--5. We agree with the Examiner because claim 1 does not recite any particular way of displaying caskets or trim components, or installing trim components in caskets, let alone recite ways of displaying or installing that are representative of an inventive concept. Even if we were to interpret claim 1 as being limited to manual display and installation steps, Appellants' argument that manual steps do not preclude patent eligibility (see App. Br. 10-11) is unavailing. That is, while the existence of manual steps does not foreclose patent eligibility, it does not guarantee it either. See, e.g., In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) (holding that "shuffling and dealing a standard deck of cards" did not "bring the claims within patent- eligible territory"); In re Brown, 645 Fed.Appx. 1014, 1017 (Fed. Cir. 2016) (non-precedential) ("We hold that step ( e ), using scissors to cut hair, is insignificant post-solution activity."). In this case, Appellants have not identified any manual steps that provide significantly more than the abstract idea of merchandising caskets, namely, because no manual steps are specifically recited in claim 1 in such a way as to define an inventive concept. Appellants present similar arguments for independent claim 11. See App. Br. 11-12. We are not persuaded by these arguments for similar reasons to those discussed above regarding independent claim 1. In particular, we disagree with Appellants' characterization of claim 11 as 5 Appeal2017-004194 Application 13/743,809 "physically manipulating tangible objects to accomplish stated utilitarian goals." (App. Br. 12). The claim 11 steps of "selecting a casket" and "selecting a packaged casket interior trim component set" can be purely mental processes, such as making mental notes, and the step of "directing that the casket interior trim components ... be installed" encompasses making a verbal command. In other words, nothing in claim 11 requires any physical steps be taken aside from human thought and speech. Accordingly, we are not persuaded the Examiner erred in rejecting claims 1-20 as being directed to patent-ineligible subject matter. Obviousness Claims 1, 2, 11, and 12 Regarding independent claim 1, Appellants contend "[ n Jone of the specific method steps recited in claim 1 is remotely taught or suggested by Riga," "Calhoun clearly supplies none of the deficiencies of Riga," and the Examiner's reliance on Official Notice similarly "supplies none of the deficiencies of Riga and Calhoun." App. Br. 14. Appellants also contend there is no apparent reason to combine the references other than improper hindsight. App. Br. 15. We are not persuaded by Appellants' arguments. Appellants have not specifically explained why any particular claim limitations are missing from the Examiner's cited references. Rather, Appellants summarize the claim limitations and broadly assert that "Riga teaches nothing more than the prior art old way of merchandising caskets, including displaying various caskets, interior trims, and exterior ornaments," and that the other references fail to cure the deficiencies of Riga. App. Br. 14. Absent a specific explanation of the shortcomings of the references vis- 6 Appeal2017-004194 Application 13/743,809 a-vis claim 1, we find Appellants fail to show error in the Examiner's findings. Further, Appellants have not addressed the Examiner's reasons for combining Riga, Calhoun, and the well-known elements for which the Examiner relied upon Official Notice. The Examiner concludes one would have combined Calhoun's teaching of installing trim components in a casket with Riga to "give a personalized/customized look and feel to the casket as per the purchaser's requirements." Final Act. 11; Ans. 9. The Examine further concludes one would have combined the Officially Noticed elements of packaged component sets with Riga and Calhoun "so that the purchaser can see and decide which one to select to personalize the casket." Ans. 9. Appellants' arguments fail to specifically explain any shortcomings with the Examiner's stated reasons supporting the proposed combination. Regarding independent claim 11, Appellants present similar arguments as presented for independent claim 1. See App. Br. 16-17. We are not persuaded by these arguments for the same reasons discussed above. Regarding claims 2 and 12, Appellants contend "[n]othing in the cited combination teaches or suggests casket interior trim component sets packaged in a container that is at least in part transparent to permit the purchaser to view the trim components through the container." App. Br. 18. However, the Examiner has relied on Official Notice for the transparent packaging feature, in particular citing Bisbal et al. (US 2005/0045499 Al, published Mar. 3, 2005) and Alldredge-Howard et al. (US 2007 /0065049 Al, published Mar. 22, 2007). Appellants do not specifically explain the shortcomings of the Examiner's reliance on Official Notice, as supported by Bisbal and Alldredge-Howard. 7 Appeal2017-004194 Application 13/743,809 We are, therefore not persuaded the Examiner erred in rejecting claims 1, 2, 11, and 12 as obvious over Riga, Calhoun, and Official Notice. Claims 3-10 and 13-20 Appellants contend the Examiner has failed to make a prima facie case of obviousness regarding the limitations recited in each of claims 3-10 and 13-20. App. Br. 18-10. The Examiner responds by finding the limitations are non-functional descriptive material, and are thus not due any patentable weight. Ans. 11-13. In the Reply Brief, Appellants argue the Examiner must give patentable weight to all limitations in claims 3-10 and 13-20. Reply Br. 5---6. We find that the limitations in claims 3-10 and 13-20 do not recite non-functional descriptive material. Rather, each of the limitations at issue----e.g., "a mattress cover, a pillow cover, a big body, a small body, and an overthrow," as recited in claim 3-recite distinct objects to be installed in a casket, not merely labels or information. Cf King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (holding that an otherwise anticipated method claim does become patentable by including "a step of 'informing' someone about the existence of an inherent property of that method"). Accordingly, each of the limitations in claims 3-10 and 13- 20 must be given patentable weight. However, the Examiner has not made specific findings showing where each of the limitations of claims 3-10 and 13-20 can be found in the cited references. We are, therefore, constrained by the record to find the Examiner erred in rejecting claims 3-10 and 13-20 as obvious. 8 Appeal2017-004194 Application 13/743,809 CONCLUSIONS Under 35 U.S.C. § 101, the Examiner did not err in rejecting claims 1-20 as being directed to patent-ineligible subject matter. Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims 1, 2, 11, and 12, but did err in rejecting claims 3-10 and 13-20. DECISION We affirm the Examiner's decision to reject claims 1-20. See 37 C.F.R. § 4I.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed."). 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. § 41.50(±). AFFIRMED 9 Copy with citationCopy as parenthetical citation