Ex Parte Cheng et al

Patent Trials and Appeals Board

Mar 14, 2019

15048972 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/048,972 02/19/2016
119042 7590 03/18/2019
Weaver Austin Villeneuve & Sampson LLP; FITBIT
ATTN: FITBIT, INC
P.O. BOX 70250
Oakland, CA 94612-0250
Yeqing Cheng
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.
FITB.021A2 7341
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/18/2019 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):
uspto@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEQING CHENG, Y ASAMAN BAIANI,
JACOB ANTONY ARNOLD, ALLISON MAY A RUSSELL, and
ALAN MCLEAN
Appeal2018-004701
Application 15/048,972
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-23 under 35 U.S.C. § 101 as directed to a judicial
exception to patent eligible subject matter. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 Fitbit, Inc. is the Applicant and the real party in interest. Appeal Br. 3.
Appeal2018-004701
Application 15/048,972
THE INVENTION
Appellants' invention relates to tracking user motion activity. Spec.
,r 2. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
capturing motion data using one or more sensors of an
activity tracking device, the activity tracking device having a
memory for storing computer instructions and a processor for
executing the computer instructions, the processor configured
for capturing the motion data;
identifying using the processor one or more intervals of
time during a day, each interval including a start time and an
end time, a near-end time being defined between the start time
and the end time;
determining using the processor, based on the output of the
one or more sensors, that the user is wearing the activity
tracking device; and
in response to determining that the user is wearing the
activity tracking device:
generating using the processor a first notification for display
on the activity tracking device when the near-end time of a
current interval is reached and a number of steps taken by the
user during the current interval is less than a goal defined by a
predetermined number of steps;
receiving, by the processor of the activity tracking device, a
hold command from a computing device, the hold command
including a hold period selected from among a plurality of
predefined hold periods;
suspending using the processor, in response to the hold
command, the generating of the first notification during the
hold period; and
resuming using the processor the generation of the first
notification after the hold period expires without requiring user
input.
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OPINION
Appellants argue claim 1, repeat and incorporate their claim 1
arguments for independent claims 11 and 18, and then do not argue for the
separate patentability of any dependent claims. Appeal Br. 7-22. We select
claim 1 as representative and claims 2-23 stand or fall with claim 1. See 37
C.F.R. § 41.37( c)(l )(iv).
The controlling statute provides that "[ w ]hoever invents or discovers
any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title." 35 U.S.C.
§ 101. The Courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70-71
(2012).
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. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014) (citing Mayo,
566 U.S. at 72-73). 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.
Courts treat collecting information as well as analyzing information
by steps people go through in their minds as essentially mental processes
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within the abstract-idea category. Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016). In situations where an abstract idea is
implemented on a computer, the first step in the Alice/Mayo analysis asks
whether the focus of the claims is on a specific improvement in computer
capabilities or, instead, on a process that qualifies as an "abstract idea" for
which computers are invoked merely as a tool. Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
The Supreme Court characterizes the second step of the analysis 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."'
Alice, 573 U.S at 217-18 (brackets in original) (quoting Mayo, 566 U.S.
at 72-73). Where the claim is directed to an abstract idea that is
implemented on a computer, merely stating the abstract idea while adding
the words "apply it," is not enough to establish such an inventive concept.
See Alice, 573 U.S. at 223.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 224.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("2019 Guidelines"). Under such
guidelines, in conducting step one of the Alice framework, 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
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organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look 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.
Step 1, Prong 1
The 2019 Guidelines identifies three key concepts identified 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"; and ( c) mental processes including "observation,
evaluation, judgment, [and] opinion."
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Action 3. According to the Examiner,
the steps are directed to an abstract idea in the form of an idea itself. Id.
citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016).
There is little question here that claim 1 recites an abstract idea.
Appellants' Specification explains that the invention relates to methods,
systems, and programs for tracking user motion activity to enable reduction
of sedentary time by users. Spec. 2. This concept is captured in the
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recitations of claim 1. Claims App. Although the Examiner characterized
claim 1 as being directed to an abstract idea "of itself' (Final Action 3), the
abstract idea can also be considered a method of "managing personal
behavior" under the 2019 Guidelines.
A method of organizing human activity is recognized by the courts as
an abstract idea. See In re TL! Communications LLC Patent Litig., 823 F.3d
607, 613 (Fed. Cir. 2016) ( classifying and storing digital images is an
abstract idea as a method of organizing human activity); see also Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015) (tracking financial transactions to determine whether they exceed a
pre-set spending limit is an abstract idea as a method of organizing human
activity); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ( screening messages is an abstract idea as a method of
organizing human activity); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering internet
content is an abstract idea as a method of organizing human behavior).
"Information as such is an intangible," hence abstract. Electric Power
Group., 830 F.3d at 1353. Consequently, claims focused on "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are directed to an abstract idea. Id. The claims here relate to
monitoring and managing user behavior by collecting data, processing the
data, and notifying the user. Claims App. As such, the method recites an
abstract idea under the principles espoused in Electric Power Group.
Step 1, Prong 2
Under Prong 2 of Step 1 of the 2019 Guidelines, we do not assume
that such claims are directed to patent ineligible subject matter because "all
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inventions [at some level] embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016) quoting Alice. 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 America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. 2019
Guidelines. If the claims are "directed to" an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed user activity
monitoring method 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 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. 2019 Guidelines.
Here, Appellants argue that claim 1 is not directed to an abstract idea,
analogizing their invention to those of McRO and Enfzsh. Appeal Br. 9.
Appellants, furthermore, attempt to distinguish their invention from those of
Alice, supra; Parker v. Flook, 437 U.S. 584 (1978); and Bilski v. Kappas,
561 U.S. 593 (2010). Id. Appellants argue that claim 1 is directed to an
improvement in sensor-based activity tracking device technology. Id.
Appellants, furthermore, argue that an improvement in computer-related
technology is not limited to improvements in the operation of a computer per
se, but may also be claimed as a set of rules not previously performable by a
computer. Id. at 11 (citing McRO, 837 F.3d at 1315).
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In response, the Examiner states that, unlike McRO and Enfzsh,
Appellants' invention is not a technological improvement. Ans. 2.
According to the Examiner, Appellants claim computing elements only to
embody their abstract idea. Id. at 3.
Appellant's claimed improvement is, instead, that the human
user of the activity tracking device will not be bothered by
notifications for some period of time. An improvement of that
nature, however, is not a technological improvement because it
does not necessarily require any technology to perform.
Appellant's claimed abstract idea could be performed, e.g., by a
human coach instead of by the claimed computing elements.
For example, a coach could observe the user and count his/her
steps in order to see if the step count met some predetermined
goal over a time interval. The coach would then provide verbal
notifications to the user that he/she did or did not meet that
goal. However, if the user asked the coach not to provide those
notifications for some specific period of time (e.g., on a lunch
break) the coach would then wait until that period was over
before then beginning to provide the notifications again.
Appellant claims computer elements to perform the functions
here that could otherwise be performed by a human coach but
any improvement is not to those computing elements qua
computing elements but instead is to the user experience in
terms of not being bothered with notifications when he/she does
not want to be. Improving a person's user experience is not,
however, a technological improvement.
Id. at 3--4.
In reply, Appellants repeat their analogy to McRO and reiterate that a
set of rules implemented on a computer can result in patent eligible subject
matter. Reply Br. 4. Appellants characterize their method as "improving the
functionality" of sensor-based activity tracking device. Id.
Although automating tasks that humans are capable of performing
may be patent eligible if properly claimed (See McRO, 837 F.3d at 1313),
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we are not persuaded by Appellants' effort to characterize "improving the
functionality" as a technological improvement analogous to that of McRO
and Enfzsh. Here, the method of claim 1 generally comprises five functional
method steps, namely: (1) identifying, (2) generating, (3) receiving,
( 4) suspending, and (5) resuming. Claims App. The method collects,
processes, and presents information to induce users to change their behavior.
Such is properly characterized as managing personal behavior.
The prospect that Appellants' method uses a computerized "tool" does
not render the claims less abstract. An abstract idea does not become
nonabstract by limiting the invention to a particular technological
environment. Intellectual Ventures I, 792 F.3d at 1367; see also Affinity
Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
(Merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract); see
also Alice, 573 U.S. at 224 (the fact a computer exists in the physical realm
is beside the point). Unlike Enfzsh, the focus of the instant claims is not on
improving a computer, but rather on a process for which computers are
invoked merely as a tool. See Enfish, 822 F.3d at 1335-36. The Examiner
is correct that "[i]mproving a person's user experience," without more, is not
a technological improvement. Ans. 4. The claims, thus, fail to integrate the
judicial exception into a practical application and, therefore, is "directed to"
an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
"inventive concept" in the application of the ineligible matter to which the
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claim is directed to. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167 (Fed. Cir. 2018). "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]."' Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77-78). Those "additional features" must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
Under step two of the Alice/ Mayo framework, the Examiner
determines that Appellants' activity tracking method, considered both
individually and in combination, do not amount to significantly more than
the abstract idea. Final Action 4. Specifically, the Examiner finds that:
[T]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because an activity tracking device that captures
motion data and having a memory and a processor and
determines whether or not the user is wearing the device; and a
computing device are generic, well known and conventional
computer components and are claimed to provide generic,
well-known, and conventional functions such as capturing data,
executing computer instructions, and displaying the outcome of
those instructions.
Id. at 4.
Appellants argue that claim 1 defines a "non-conventional
arrangement of components" that provide an inventive concept. Appeal
Br. 14--15. In particular, Appellants argue the arrangement of sensors and
the processor, configured to suspend and resume notifications, is a non-
conventional arrangement of components. Id. at 15 ( quoting Amdocs
(Israel) Ltd, v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01 (Fed. Cir.
2016).
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However, what Appellants point to as "inventive" is just the abstract
idea itself. Appeal Br. 14--15. We may assume that the techniques claimed
are "[g]roundbreaking, innovative, or even brilliant," but that is not enough
for eligibility. SAP Am., 898 F.3d at 1163 (quoting Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)). Appellants'
steps of identifying, generating, receiving, suspending, and resuming merely
tell a computer to "apply" the abstract idea of step 1. However, it does not
matter how innovative Appellants' abstract idea is. Id. A claim for a new
abstract idea is still an abstract idea. Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
Appellants' effort to analogize the instant case to Amdocs is
unpersuasive. The claim at issue in Amdocs contained an "enhancing
limitation" that necessarily required otherwise generic network devices and
"gatherers" to operate in an unconventional manner to achieve an
improvement in computer functionality. Amdocs, 841 F.3d at 1300-01.
Appellants argue, in conclusory fashion, that the instant case is analogous to
Amdocs, but they point to nothing in claim 1 that can be considered
unconventional in a manner analogous to the "enhancing limitation" in
Amdocs.
Appellants' Specification reveals the well-understood, routine, and
conventional nature of the computer technology used in the invention. For
example:
Figure 1 is a block diagram of a system architecture according
to one embodiment. Portable biometric devices, also referred to
as activity tracking devices, will be referred to herein by way of
example to illustrate aspects of the embodiments. Some
activity tracking devices are portable and have shapes and sizes
that are adapted to couple to the body of a user (e.g., activity
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tracking devices 102, 106), while other devices are carried by
the user (e.g., mobile phone 108, laptop 110, tablet), and other
devices may be stationary ( e.g., electronic scale 104, a digital
thermometer, personal computer).
Spec. ,r 35.
The devices collect one or more types of physiological or
environmental data from embedded sensors or external devices.
The devices can then communicate the data to other devices, to
one or more servers 112, or to other internet viewable
sources. As one example, while the user is wearing an activity
tracking device 102, the device can calculate and store the
number of steps taken by the user (the user's step count) from
data collected by embedded sensors. Data representing the
user's step count is then transmitted to an account on a web
service (such as www.fitbit.com for example) where the data
may be stored, processed, and viewed by the user. Indeed, the
device may measure or calculate a plurality of other
physiological metrics in addition to, or in place of, the user's
step count.
Id. ,I 36
The monitoring device 152 is an example of any of the
monitoring devices described herein, and including a step
tracker, a fitness tracker without buttons, or a fitness tracker
defined to be clipped onto the belt of a user, etc. The
monitoring device 152 includes processor 154, memory 156,
one or more environmental sensors 158, one or more position
and motion sensors 160, watch 162, vibrotactile feedback
module 164, display driver 168, touchscreen 206, user
interface/buttons 170, device locator 172, external event
analyzer 174, motion/activity analyzer 176, power
controller 178, battery 180, and heart rate monitor 182, all of
which may be coupled to all or some of the other elements
within monitoring device 152.
Id. ,r 177. Thus, Appellants use one or more sensors to capture motion data.
Claims App. claim 1. The sensors may be a biometric sensor or motion
sensor or any other type of sensor configured to detect user activity. Spec.
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,r 157. There is no indication in the Specification that Appellants have
achieved an advancement or improvement in sensor technology. See
generally Spec. Appellants use a computer processor to identify time
intervals, determine that a user is wearing the device, generate notifications
for display, and suspend notifications. Claims App. claim 1. There is no
indication in the Specification that Appellants have achieved an
advancement or improvement in computer processing technology. See
generally Spec. There is similarly no indication in the Specification that
Appellants have achieved an advancement or improvement in display
technology. Id.
A patent applicant is required to submit a specification that contains a
written description of the invention in "full, clear, concise, and exact terms."
35 U.S.C. § 112(a). For purposes of the Alice/Mayo analysis, a specification
demonstrates the well-understood, routine, conventional nature of step 2
"additional elements" when it describes them in a manner that indicates they
are sufficiently well-known that they need not be described with
particularity to satisfy 35 U.S.C. § 112(a).2 That is the case here.
Essentially, all Appellants have done here is use motion sensors to
capture data, use computer processing technology to correlate the motion
data to time intervals, and generate information displays to a user. This is
quintessentially "collecting information, analyzing it, and displaying certain
results of the collection and analysis." Electric Power Group., 830 F.3d
at 1353. Appellants' method recites an "abstract idea" for which computers
2 Memorandum from the U.S. Patent & Trademark Office, Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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are invoked merely as a tool. Enfish, 822 F.3d at 1335-36. In short, claim 1
is directed to an abstract idea that is implemented on a computer in a manner
that merely states the abstract idea while adding the words "apply it." See
Alice, 573 U.S. at 223. This is not sufficient for patent eligibility. Id.
Appellants argue that claim 1 does not preempt or monopolize any
abstract concept. Appeal Br. 12, This argument is not persuasive as it is
well settled that"[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We have considered Appellants' remaining arguments and find them
to be without merit. The recited elements of claim 1, considered
individually and as an ordered combination, do not constitute an "inventive
concept" that transforms independent claim 1 into patent-eligible subject
matter. On this record, we affirm the Examiner's§ 101 rejection of claim.
DECISION
The decision of the Examiner to reject claims 1-23 as being directed
to unpatentable subject matter under 35 U.S.C. § 101 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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