Ex Parte Culver et al

Patent Trial and Appeal Board

Jul 30, 2018

13452395 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/452,395 04/20/2012 Stephen F. Culver
120704 7590 08/01/2018
Caseiro Burke LLC
P.O. Box 610
Scarborough, ME 04070-0610
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.
HAN-001CON2 9770
EXAMINER
FRENEL, V ANEL
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
ccaseiro@caseiroburke.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN F. CUL VER, LESLIE M. FISCHER,
JAMES L. McBRIDE, LISAA. SUTHERLAND, and
JOHN A. VITAGLIANO
Appeal2017-005468
Application 13/452,395
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Pa tent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 30-38, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. §6(b).
Claims 1-29 and 39-53 were cancelled.
We affrrm.
CLAIMED SUBJECT MATTER
Appellants' invention "relates to retail food sales. In particular, the
present invention relates to characterizing the nutritional value off oods in a
1 Appellants identify the real party in interest as Guiding Stars Licensing
Company. Br. 3.
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Application 13/452,395
standardized way, establishing food nutritional value designations, and
presenting that information in a readily observable manner." Spec. ,r 2.
Claim 302 is representative and reproduced below:
30. A non-transitory computer-readable medium including a
computer program for assigning nutritional value ratings to a
plurality of food products of the same and different type, wherein
the computer program includes instructions that, when executed
by a computer system, uses the computer system to perform a
method comprising, for each food product, assigning a
nutritional quality rating for use by food consumers by:
d. executing a data gathering function and a data filtering
function of the computer system that
i. stores in one or more databases nutritional data for
a plurality of nutritional quality attributes of the food
product, wherein caloric value is not an evaluated
nutritional quality attribute of the food product; and
ii. establishes ranges of nutritional quality attribute
values for each nutritional quality attribute, wherein
nutritional quality attribute values are not established for
caloric content of the food product;
e. assigning a point value to each of the ranges of
nutritional quality attributes to establish a relative importance of
each of the ranges, and storing the point values for each of the
ranges in the one or more databases; and
f. executing a scoring function of the computer system,
wherein the scoring function is in communication with the one
or more databases that
i. calculates a total nutritional quality score for the
food product based on the point values of the nutritional
2 We note that Appellants' listing of the claims in the Appeal Brief
inadvertently used the letters "d ""e "and "f" instead of "a ""b "and "c"
' ' ' ' ' when labeling the steps for assigning a nutritional quality rating. Prior
versions used the letters a---c but we reproduce the claim here consistent with
the claims presented in the Appeal Brief.
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quality attributes for the food product and a scormg
algorithm, and
ii. assigns a nutritional value rating based upon the
total nutritional quality score, wherein each nutritional
value rating corresponds to a nutritional quality score or a
range of nutritional quality scores, and wherein the same
scoring algorithm and rating correlations are used to
output nutritional quality information to consumers for
different types of food products.
REJECTION3
Claims 30-38 standrejectedunder35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 2--4.
ANALYSIS
Appellants provide one subheading "CLAIMS 30-38 ARE
PATENTABLESUBJECTMATTERUNDER35USC § lOl"in the
Argument section of the Brief. Br. 6. Appellants, therefore, argue claims
30-38 "as a group (all claims subjectto the ground of rejection stand or fall
together)." 37 C.F.R. § 4I.37(c)(l)(iv) (2016). And we, therefore, select
claim 30 as representative of the group and decide the appeal with respect to
the group on the basis of representative claim 30 alone. See id.
3 In the Withdrawn Rejections section of the Answer, the Examiner indicates
"[t]he 101 rejection regarding the claims 30-38 as directed to a signal per se
is withdrawn in light of the approved Terminal Disclaimer on 02/11/15."
Ans. 2. These rejections, however, were withdrawn in a previous Office
action that Appellants do not appeal from. See present Appl'n 13/452,395,
Office action mailed August 5, 2015. Thus, these rejections are not before
us.
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Accordingly, claims 31-38 stand or fall together with representative
claim 30.
The Alice/Mayo Framework
The Patent Act defmes patent-eligible subject matter broadly:
"Whoever 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.
Appellants contend: "Claim 30 [is] directed to a 'manufacture' in
accordance with the [Interim Eligibility Guidance on Subject Matter
Eligibility (IEG)] provided by the US Patent Office. Specifically, the
manufacture is the non-transitory computer-readable medium containing
instructions thereon that are actionable by a computer system in combination
with a database." Br. 6 ( citing July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) ("the 2015 Guidelines")4).
We agree with Appellants that claim 30 is directed to a manufacture----oneof
the four statutory categories of subject matter that Congress deems to be
appropriate subject matter for a patent.
We, however, fmd unavailing Appellants argument that"[ c ]laim 30
renders the invention patentable subject matter as being directed to a
'manufacture."' Br. 6. "A person may have 'invented' ... a manufacture,
which may include anything under the sun that is made by man, but it is not
4 The 2015 Guidelines are available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update. pdf.
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necessarily patentable under section 101 unless the conditions of the title are
fulfilled." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 89 (2012) (quoting H.R. REP. No. 1923, 82d Cong., 2d Sess., at 6
(1952)).
That is, in Mayo, 566 U.S. at 70, andAlice Corp. Proprietary Ltd. v.
CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme Court
explained that § 101 "contains an important implicit exception" for laws of
nature, natural phenomena, and abstract ideas. See Diamond v. Di ehr, 450
U.S. 175, 185 (1981). InMayo and Alice, the Court set forth a two-step
analytical framework for evaluating patent-eligible subject matter: (1)
"determine whether the claims at issue are directed to" a patent-ineligible
concept, such as an abstract idea; and, if so, (2) "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements" add enough to transform the "nature of the
claim" into "significantly more" than a patent-ineligible concept. Alice, 134
S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Instead of using
a definition of an abstract idea, "the decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (citing Elec. Power, 830 F.3dat 1353-54); accord page 3,
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section III of the 2015 Guidelines (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.").
Step two involves the search for an "inventive concept." Alice, 134
S. Ct. at 2355; Elec. Power, 830 F.3d at 1353. For an inventive concept,
"more is required than 'well-understood, routine, conventional activity
already engaged in"' by the relevant community. RapidLitig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566
U.S. at 79-80).
Step One of the Alice Framework
Appellants do not contest the Examiner's conclusion that claim 3 0 is
directed to (1) a mathematical relationship/formula, Final Act. 2--4; Ans. 7-8
( citing numerous court decisions from page 5, section III, sub-section D of
the 2015 Guidelines), and (2) a method of organizing human activity, Ans.
6-7 ( citing Di etgoal Innovations LLC v. Bravo Medi a LLC, 599 F. App 'x.
956 (Fed. Cir. 2015)). Rather than distinguishing the claimed invention
from these abstract ideas, Appellants contend claim 30 is more than an
abstract idea, Br. 7-an argument related to step two of the Alice analysis.
Moreover, we see little difference between claim 30 here directed to
collecting and analyzing data and those in, for example, Electric Power.
Similar to the claims in Electric Power,
the claims do not go beyond requiring the collection, analysis,
and display of available information in a particular field, stating
those functions in general terms, without limiting them to
technical means for performing the functions that are arguably
an advance over conventional computer and network technology.
The claims, defming a desirable information-based result and not
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limited to inventive means of achieving the result, fail under
§101.
Elec. Power, 830 F.3dat 1351. And just as in Electric Power, we find
"collecting information, including when limited to particular content ( which
does not change its character as information), as within the realm of abstract
ideas." Id. at 1353.
Moreover, a method is merely an abstract idea and is not patent-
eligible under § 101 if the method can be performed by human thought
alone, or by a human using pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011); see also
Gottschalkv. Benson, 409U.S. 63, 67 (1972). Thefunctionsofclaim 30 can
be performed mentally or by using pen and paper. That is, a human can
mentally ( or use pen and paper to do so): ( 1) store nutritional data for
nutritional quality attributes of a food product, and establish ranges of
nutritional quality attribute values for each nutritional quality attribute; (2)
assign a point value to each of the ranges to establish a relative importance
of each of the ranges, and store the point values in memory; and (3) calculate
a total nutritional quality score for the food product based on the point
values of the nutritional quality attributes and a scoring algorithm, and
assign a nutritional value rating based upon the total nutritional quality
score. That claim 30 adds a "non-transitory computer-readable medium
including a computer program ... wherein the computer program includes
instructions, that, when executed by a computer system, uses the computer"
to perform the method of claim 30 does not change our conclusion. See
Alice, 134 S. Ct. at 2357-58.
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For the above reasons, Appellants provide no persuasive argument or
evidence showing the claims are not directed to an abstract idea.
Accordingly, we are unpersuaded the Examiner erred in concluding the
claims are directed to an abstract idea.
Step Two of the Alice Framework
Because we find that the claims are "directed to an abstract idea," we
tum to step two of the Alice framework to determine whether the limitations,
when considered both "individually and 'as an ordered combination"'
contain an "inventive concept" sufficient to transform the claimed "abstract
idea" into a patent-eligible application. Alice, 134 S. Ct. at 2355-58.
We find unavailing Appellants' contention that the fact that specific
elements of claim 30 "and their combination solve the problem of providing
consumers with reliable nutritional quality analysis across an array of food
types so that a fair comparison may be made among disparate food types" is
sufficient to transform the abstract idea into an eligible application of that
idea. Br. 8. Even assuming claim 3 0 is directed to an improvement to a
nutritional quality analysis, the improvement does not parallel any
improvement to computer functionality itself, such as with Enfish 's "self-
referential table fora computer database." Enfish,LLCv. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016). Nor do Appellants identify any
recitation in the claims that is directed to an improvement to a problem
specifically arising in the realm of computer networks, such as DD R's
overriding of routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink. DDRHoldings, LLCv. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). Thus, contrary to Appellants'
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contention that claim 30 is significantly more than storing and organizing
data (Br. 8), claim 30 is directed to "an economic or other [process] for
which the computer is used in its ordinary capacity" as a tool. Enfish, 822
F.3d at 1336.
Our reviewing court recognized in Ultramerci al, Inc. v. Hulu, LLC,
772 F.3d 709, 714 (2014) (quoting Bilski v. Kappas, 561 U.S. 593,594
(2010)) that the "machine-or-transformation" test, although not the only test,
can nevertheless provide a '"useful clue' in the second step of the Alice
framework." Underthe "machine-or-transformation" test, a claimed process
is patent eligible under § 101 if: ( 1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article into a different state or
thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), ajf'd sub nom. Bilski,
561 U.S. at 593. According to the Federal Circuit in In re Bilski, the
transformation prong of the machine-or-transformation test ( 1) must involve
transforming an underlying article from one state to a different state or thing,
and (2) must be central to the purpose of Appellants' claimed process. Id.
While an underlying article can be intangible, such as electrical signals, and
transformation can include data transformation, the data must represent a
physical object or an article. In re Bilski, 545 F.3d at 962---63.
"Regardless of what statutory category ('process, machine,
manufacture, or composition of matter,' 35 U.S.C. § 101) a claim's language
is crafted to literally invoke, we look to the underlying invention for patent-
eligibility purposes." Cy her Source Corp. v. Retail Decisions, Inc., 654 F. 3d
1366, 1374(Fed. Cir. 2011). In that case, theFederalCircuit stated that,
notwithstanding the fact that a particular claim was drawn to a computer
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readable medium (CRM), it was "clear that the invention underlying both"
the CRM claim and the method claim "is a method for detecting credit card
fraud, not a manufacture for storing computer-readable information." Id.
The court then treated the CRM claim and the method similarly with respect
to the §IOI-eligibility of the two claims. Id. at 1374--76. Similarly, the
underlying invention of Appellants' CRM claims relates to providing
nutritional ratings off ood, not a manufacture for storing a computer
program. Accordingly, the machine-or-transformation test is as relevant to
Appellants' CRM claims as it would be to claims drafted to the underlying
process executed by the claimed computer program.
Nevertheless, we fmd unavailing Appellants' contention that the
"resultant output to consumers is transf ormative of the information input as a
result of the nutritional quality analysis performed." Br. 8. Claim 3 0 does
not apply the algorithm to or obtain data from physical and tangible objects,
such as bones, organs, and body tissues. See, e.g., In re Abele, 684 F .2d 902
(CCP A 1982) (holding a process for graphically displaying X-ray data as
patent-eligible because X-ray data was obtained from physical and tangible
objects such as bones, organs and body tissues); see also Arrhythmia
Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992)
( concluding that claims directed to an apparatus and process of analyzing
electrocardiographic signals were patent-eligible because these electrical
signals were obtained from physical heart activity that was being monitored
in a patient). Claim 30 recites assigning a nutritional quality attribute for a
food product, storing nutritional data for nutritional attributes of the food
product, and calculating a total nutritional quality score for the food
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product-mere data that indirectly relates to the food product. We see no
causal connection between the data and a physical and tangible
representation of the food product.
Nor do we fmd availing Appellants' preemption argument that the
pending claims would not prevent one from providing nutritional
information because it does not alter our § 101 analysis. See Br. 9.
Preemption concerns are fully addressed and made moot where a claim is
deemed to disclose patent ineligible subject matter under the two-part
framework described in Alice. Arias a Di agnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379(Fed. Cir. 2015). "Whilepreemptionmaysignal patent
ineligible matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.
Lastly, Appellants separately argue claim 37 under the same
subheading that groups claims 30-38. Br. 9. At the outset, we note
Appellants fail to provide proper subheadings as required by 37 C.F.R.
§ 41. 3 7 ( c )( 1 )(iv) (providing that "any claim( s) argued separately or as a
subgroup shall be argued under a separate subheading that identifies the
claim( s) by number."). Therefore, to the extent that Appellants intend to
argue claim 37 separately, such a separate argument does not comply with
regulatory requirements and, therefore, is waived.
Nevertheless, even if we were to consider Appellants' additional
contention regarding claim 3 7, we fmd this argument unavailing. According
to Appellants, claim 37 is directed to patent-eligible subject matter because
the claim "provides very specific limitations about the use of two different
correlations for two different food types." Br. 9. Appellants do not
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persuasively explain how using two different correlations for two different
food types alters the character of claim 3 7 as being directed to an abstract
idea under step one of the Alice framework, or provides significantly more
than the abstract idea under step two of the Alice framework. Moreover,
nothing precludes performing the functions of claim 3 7 mentally or with pen
and paper. See CyberSource, 654 F.3d at 1372-73; see also Gottschalk,
409 U.S. at 67. That is, a human can mentally ( or use pen and paper to do
so) use a first correlation between each nutritional value rating and a
nutritional quality score for a frrst type of food products, and use a second
correlation between each nutritional value rating and a nutritional quality
score for a second type of food products.
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 134 S. Ct. at 2360 ( citing Mayo, 566 U.S. at 71 ).
Summary
For the above reasons, Appellants have not persuaded us of error in
the Examiner's rejection of claims 30-38 under 35 U.S.C. § 101.
Accordingly, we sustain the Examiner's rejection.
DECISION
We affrrm the Examiner's decision to reject claims 30-38 as directed
to ineligible subjectmatterunder 35 U.S.C. § 101.
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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
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