Ex Parte CohenDownload PDFPatent Trial and Appeal BoardFeb 9, 201612452977 (P.T.A.B. Feb. 9, 2016) 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. 12/452,977 01/29/2010 Elizabeth Heller Cohen 8351/US/PCT 1126 69099 7590 02/09/2016 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 EXAMINER GILLS, KURTIS ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 02/09/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELIZABETH HELLER COHEN ____________ Appeal 2014-0004441,2 Application 12/452,977 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the invention “relates generally to systems and methods for improving the rating for a brand[,] and[,] particularly[,] to 1 Our decision references Appellant’s Specification (“Spec.,” filed Jan. 29, 2010), Appeal Brief (“Appeal Br.,” filed June 10, 2013), and Reply Brief (“Reply Br.,” filed Sept. 30, 2013), as well as the Non-Final Office Action (“Non-Final Action,” mailed Dec. 11, 2012) and the Examiner’s Answer (“Answer,” mailed July 30, 2013). 2 According to Appellant, “[t]he real party in interest is Nestec, S.A.” Appeal Br. 3. Appeal 2014-000444 Application 12/452,977 2 systems and methods for determining a composite rating for sustainability of a brand.” Spec. ¶ 2. Claims 1, 10, and 19 are the only independent claims under appeal. We reproduce below claim 1 as representative of the appealed claims. 1. A method for determining a composite rating for sustainability for a brand, comprising the steps of: selecting a number of sustainability factors that are applicable to the brand; associating each sustainability factor with a list of activities pertaining thereto, wherein the activities are ranked by level of sustainability; selecting an activity from the list that is an attribute of the brand for each applicable sustainability factor; determining a score for each selected activity based on its rank in the list of activities for that sustainability factor; calculating the composite rating based on the scores for the selected activities; and displaying the composite rating; wherein at least one of the steps of the method is performed with a processor or computer. Appeal Br., Claims App. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: claims 1–9 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter Appellant regards as the invention; claims 1–9 under 35 U.S.C. § 101 as directed to non-statutory subject matter; and Appeal 2014-000444 Application 12/452,977 3 claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Ohnemus (US 2004/0249697 A1, pub. Dec. 9, 2004) and Kobayashi (US 7,412,365 B2, iss. Aug. 12, 2008). See Non-Final Action 4–27; see also Answer 2–25. ANALYSIS Indefiniteness rejection The Examiner rejects claims 1–9 as indefinite because independent claim 1, from which claims 2–9 depend, “states ‘wherein at least one of the steps of the method is performed with a processor or computer.’ This limitation is indefinite . . . because it is unclear where [Appellant] is using the processor since there are a number of steps [claimed].” Answer 2–3. We determine, however, that the Examiner’s interpretation is contrary to the language of claim 1, which states that “at least one of the steps of the method is performed with a processor or computer.” Appeal Br., Claims App. Thus, we agree with Appellant it is clear that claim 1 covers “[a]ny one or more of the six steps recited in the claim . . . be[ing] performed with a processor or computer,” and, thus, “[w]hereas claim 1 arguably may be broad, the subject matter embraced by the claim[] is clear.” Appeal Br. 13; see also Reply Br. 3–4. Based on the foregoing discussion, we do not sustain the indefiniteness rejection of claims 1–9. Subject matter rejection The Examiner rejects claim 1–9 as directed to non-statutory subject matter in accordance with the machine-or-transformation test set forth in Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010), determining “[t]here is no Appeal 2014-000444 Application 12/452,977 4 significant step [in the claims] [which] has a tie in the body of the claim[s] to a particular machine” and “the data input in claim 1 are being used to determine composite ratings for brand sustainability; however, none of these operations transforms an article to a different state or thing,” the Examiner further concluding that “there is no clear indication that the method is not directed to an abstract idea relating to brand sustainability.” Answer 6. In response, Appellant argues that “[f]irst, the claimed subject matter satisfies the machine[-]or[-] transformation test and is patent-eligible for that reason alone. Second, the [E]xaminer has not demonstrated that the claims are directed to an abstract idea, a l[a]w of nature[,] or a natural phenomenon.” Appeal Br. 17. At pages 3–4 of the Answer the Examiner has applied largely the machine-or-transformation test, which is a useful and important clue in an analysis for subject matter eligibility under 35 U.S.C. § 101, but not the sole test. The analysis presented at pages 3–5 has failed to provide a fully developed prima facie case to show that the claim is directed to an abstract idea. We determine that the Examiner’s statements do not rise to the level of a finding that claim 1 discloses an abstract idea. See Appeal Br. 17. The Examiner states, in relevant part, only that “there is no clear indication that the method is not directed to an abstract idea relating to brand sustain ability. For instance, the factor of calculating composite ratings is a general concept that is disembodied.” However, the Examiner does not explain sufficiently what is meant by “disembodied,” and why “disembodi[ment]” is relevant to a determination of whether claim 1 is abstract. Thus, for the reasons discussed above, we do not sustain the Examiner’s rejection of claims 1–9 under 35 U.S.C. § 101. Appeal 2014-000444 Application 12/452,977 5 Obviousness Claim 1 recites the following: selecting a number of sustainability factors that are applicable to the brand; associating each sustainability factor with a list of activities pertaining thereto, wherein the activities are ranked by level of sustainability; selecting an activity from the list that is an attribute of the brand for each applicable sustainability factor; [and] determining a score for each selected activity based on its rank in the list of activities for that sustainability factor. Appeal Br., Claims App. (emphasis added). Appellant argues, in part, that the Examiner erroneously finds that Ohnemus discloses the claimed determining step. Appeal Br. 31. The Examiner finds that Ohnemus’s paragraphs 75–77 and Figures 11A–11F and 13A–13F disclose the claimed determining step. See Answer 10–11. Based on our review, we conclude that the Examiner does not establish by a preponderance of the evidence that any of these portions of Ohnemus discloses determining a score for each selected activity based on its rank in a list of activities. See Appeal Br. 31 (“Ohnemus’s method does not rely on the construction of a ranked list of activities associated with a sustainability factor.”). Rather, at most, the Examiner establishes that these portions of Ohnemus describe a user or an administrative body assigning weight rankings to individual sustainability scores (e.g., social (SRS), environmental (SRE), financial (SRF), and corporate governance (SRG)) that are used to compute an overall composite sustainability score. Further, it is not clear that the Examiner finds that Ohnemus teaches determining the score for each of the activities that are selected previously Appeal 2014-000444 Application 12/452,977 6 from the list as required by claim 1. For example, with regard to claim 1’s limitation “selecting an activity from the list that is an attribute of the brand for each applicable sustainability factor” (Appeal Br., Claims App.), the Examiner finds that “Ohnemus teaches selecting activities from a plurality of activities for which to include in the custom form such as MYSRS, MYSRE, MYSRF, [and] MYSRG [scores] instead of the provided respective standard SRS, SRE, SRF, [and] SRG score.” Answer 32 (emphasis added). Yet, claim 1 requires that it is the same activity that is selected from a list whose score is subsequently determined. But, as discussed above, the Examiner discusses the individual sustainability scores (e.g., social (SRS), environmental (SRE), financial (SRF), and corporate governance (SRG) with regard to the “determining” step of claim 1. The Examiner does not explain sufficiently the relationship between i) MYSRS, MYSRE, MYSRF, and MYSRG scores and ii) SRS, SRE, SRF, and SRG scores, for example, to establish that it is the same activity that first is selected from a list whose score is subsequently determined. Thus, based on the foregoing, we do not sustain the rejection of independent claim 1 or claims 2–9 depending from claim 1. Independent claims 10 and 19, from which claims 11–18 and 20 depend, recite similar limitations. See Appeal Br., Claims App. Thus, we also do not sustain the rejection of claims 10–20. DECISION We REVERSE the Examiner’s rejection of claims 1–9 under 35 U.S.C. § 112, second paragraph. Appeal 2014-000444 Application 12/452,977 7 We REVERSE the Examiner’s rejection of claims 1–9 under 35 U.S.C. § 101. We REVERSE the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103(a). REVERSED Copy with citationCopy as parenthetical citation