Ex Parte Long

Patent Trial and Appeal Board

Mar 5, 2018

12405131 (P.T.A.B. Mar. 5, 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.
12/405,131 03/16/2009 Brian David Long 610052.401 3015
500 7590 03/07/2018
SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P
EXAMINER
701 FIFTH AVE ZARE, SCOTT A
SUITE 5400
SEATTLE, WA 98104 ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/07/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN DAVID LONG
Appeal 2016-006532
Application 12/405,131
Technology Center 3600
Before MICHAEL C. ASTORINO, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3-10, and 16, which are all of the pending
claims, under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this decision, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Nov. 16, 2015), Reply Brief (“Reply Br.,” filed June 20,
2016), and Specification (“Spec.,” filed Mar. 16, 2009), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 20, 2016) and Final Office Action
(“Final Act.,” mailed Apr. 16, 2015).
2 According to the Appellant, the real party in interest is the inventor, Brian
David Long. Appeal Br. 4.
Appeal 2016-006532
Application 12/405,131
STATEMENT OF THE CASE
The Appellant’s invention “relates to methods ensuring the safety of
food products in a food supply chain.” Spec. ^ 1.
Claims 1 and 16 are the independent claims on appeal. Claim 1
(Appeal Br. 18 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
1. A method comprising:
assigning a unique batch number to a batch of food being
processed in a processing facility;
printing the unique batch number as a computer code on a
label and attaching the label to the batch of food or directly on
packaging containing the batch of food;
obtaining a first sample and a second sample from the
batch of food and storing at least the second sample;
after obtaining the first sample and the second sample,
shipping the batch of food in association with the unique batch
number;
testing the first sample with a safety test to obtain a first
test result;
associating the first test result with the unique batch
number in a database stored on a computer readable medium;
making the first test result available in association with the
unique batch number to a downstream user who receives from
the processing facility food from the batch of food in association
with the unique batch number;
in response to receipt of a request to verify the first test
result upon the first test result indicating an unsafe risk to a final
consumer of the food, testing the second sample with the safety
test to obtain a second test result, wherein the step of testing the
second sample occurs after the step of shipping the batch of food;
making the second test result available in association with
the unique batch number to the downstream user; and
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Application 12/405,131
in response to the second test result also indicating an
unsafe risk to the final consumer, disposing of the batch of food
associated with the unique batch number such that the batch of
food is no longer usable for consumption.
ANALYSIS
The Appellant argues claims 1, 3-10, and 16 as a group. See Appeal
Br. 6-17. We select claim 1 as the representative claim for this group.
Claims 3-10 and 16 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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 7, 134 S. Ct. 2347, 2354 (2014) (quoting Ass ’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
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Application 12/405,131
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
In other words, the second step is to “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.’” Id. (quoting Mayo, 566 U.S. at 72-
73). The Court acknowledged 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 the
abstract idea, and merely invoke generic processes and machinery.
See Enflsh, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 1 is directed to the abstract idea of “retaining a sample
for future testing down the supply chain in the event a first sample indicates
a safety risk.” Final Act. 4. Conversely, the Appellant contends that the
claim is directed to “substituting the testing of food products as a sequential
step in a food supply chain with increased testing conducted as a parallel
step to the food supply chain” to improve and use the “time efficiency of
food shipping and processing ... to facilitate increased and earlier testing.”
Appeal Br. 11 (emphasis omitted).
“[T]he ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” Enflsh, 822 F.3d at 1335.
Here, claim 1 recites steps of assigning number data to food, printing the
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Application 12/405,131
data, obtaining and testing samples, shipping food, associating and making
available test results data, and disposing food in response to test results. See
Appeal Br. 18 (Claims App.). None of the steps, as claimed, are performed
by a specific machine. The Specification provides for “methods ensuring
the safety of food products in a food supply chain” (Spec. ^ 1) and that a
“system is needed to provide ongoing proof of quality and absence of
pathogens to retailers and further processors in a more efficient and cost-
effective manner than prior systems” (id. 3).
In that context, the claim is directed to obtaining, testing, and
analyzing testing data of samples to ensure safety of food products.3 This is
similar to claims found to be abstract ideas by our reviewing court. For
example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353-54 (Fed. Cir. 2016), the court held that collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category.” And, in Vehicle Intelligence & Safety
LLCv. Mercedes-Benz USA, LLC, 635 F. App’x 914, 917 (Fed. Cir. 2015),
the court held that testing operators of moving equipment for any kind of
impairment is an abstract idea. See also Cleveland Clinic Found, v. True
Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (claims
directed to testing bodily samples for a particular enzyme to determine risk
of cardiovascular disease were directed to a law of nature). Here, claim 1
3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Application 12/405,131
involves nothing more than obtaining, testing, associating, and making
available testing data of samples to determine whether to dispose unsafe
foods, without any implementation details or techniques, technical
description, or particular inventive technology — an abstract idea. See Elec.
Power Grp., 830 F.3d at 1354. As such, we find unpersuasive the
Appellant’s arguments to the contrary. See Appeal Br. 10-13; Reply
Br. 4-74.
We also find unpersuasive the Appellant’s argument that claim 1 is
not directed to an abstract idea because they provide for “a concrete, specific
process that includes unconventional steps that result in improved food
safety in a [food] supply chain.” Reply Br. 5; see also Appeal Br. 15.
“[N]ot every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry.” In re TLI Comm’s LLC Pat. Litig., 823
F.3d 607, 611 (Fed. Cir. 2016). Here, the “concrete” operations pertain to
information. “Information as such is an intangible”; obtaining, testing,
associating, and making available testing data of samples without more are
abstract, and using the data to determine whether to dispose unsafe foods “is
abstract as an ancillary part of such collection and analysis.” Elec. Power
Grp., 830 F.3d at 1353-54.
We are further not persuaded of Examiner error by the Appellant’s
argument that “the method as a whole does not pre-empt others from
applying those individual ideas or otherwise engaging in those activities.”
4 We note that the pages of the Reply Brief are not numbered. We,
therefore, consider the page that contains the title “REPLY BRIEF TO
EXAMINER’S ANSWER” page 1, and each page thereafter sequentially
numbered with the page containing the signature of Kevan L. Morgan page
11.
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Application 12/405,131
Appeal Br. 11; see also Reply Br. 7. There is no dispute that the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id. The
aforementioned concept is not sufficiently limiting so as to fall clearly on the
side of patent-eligibility.
Under the second step of the Mayo/Alice framework, we agree with
and find supported the Examiner’s determination that the elements of the
claims, individually or as an ordered combination, do not amount to
significantly more than that abstract idea. See Final Act. 4; Ans. 6-10. We
are not persuaded of Examiner error by the Appellant’s arguments that assert
the opposite. See Appeal Br. 13-16; Reply Br. 8-10.
In response to the Appellant’s argument that the claims contain an
inventive concept and are patent-eligible under § 101 because the Examiner
indicated that the claims overcome the prior art (Appeal Br. 14), we note that
an abstract idea does not transform into an inventive concept just because
the prior art does not disclose or suggest it. See Mayo, 132 S. Ct. at 1304.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
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Application 12/405,131
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 133 S. Ct.
at 2117. Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89
(1981); see also Mayo, 132 S. Ct. at 1304 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the better
established inquiry under § 101”).
We do not agree with the Appellant’s contention that the claim is
significantly more than the abstract idea because “the steps in the method
claimed by the Appellant adds unconventional steps and specific limitations
to what otherwise may be well-understood, routine, and conventional in the
field.” Appeal Br. 15. The Specification discusses that, prior to the
invention, tests of food samples were conducted and data shared. See Spec.
^ 2. The Specification does not provide for technologically or technically
improved ways of assigning number data, printing data, obtaining and
testing samples, shipping food, making testing data available, or for
disposing food. To the extent any of the steps are performed by a machine,
they are performed by generic processing facilities, printers, laboratories,
and processors (see Spec. 29-32, Fig. 2) that operate in their normal
capacities to simply implement the abstract idea. See Alice, 134 S. Ct.
at 2359. There is no further specification of particular technology for
performing the steps. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336
(focusing on whether the claim is “an improvement to [the] computer
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Application 12/405,131
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity”).
We also do not agree with the Appellant’s contention that
the method claimed in the present application, when considered
as a whole, is significantly more than an abstract idea and
provides a technical solution for a technical problem, namely
how to ship food as soon as possible while also preserving the
ability to conduct multiple tests over time where it otherwise is
inconvenient to obtain additional samples after shipping the
food.
Appeal Br. 16. The claimed method does not address steps or ways
regarding how to ship food as soon as possible, i.e., improve “the time
efficiency of food shipping” (Reply Br. 10), but rather recites steps for
assigning and printing data, obtaining and testing food samples, associating
and making test data available, shipping food in a conventional manner (see,
e.g., Spec. ^ 22), determining from the test data whether food is unsafe, and
disposing of unsafe food. The problem of unsafe food (see id. ^ 2) is not a
technical problem and the claimed solution of testing prior to distribution
(see id. ^ 3) to provide for “consumers receiving fresher food” (Reply
Br. 10) is not a technical solution.
Finally, to the extent the Appellant argues that the Examiner’s
rejection is in error because the Examiner does not follow Office guidelines
and/or does not apply the appropriate legal standards (see Reply Br. 9-11),
we disagree. Here, contrary to the Appellant’s assertion (see id. at 10), the
Examiner does not rely on the machine-or-transformation test outlined in
Bilski v. Kappos, 561 U.S. 593 (2010). Rather, the Examiner properly
analyzes the claim under the two-part Mayo/Alice framework. Specifically,
the Examiner determines that the claim is directed to an abstract idea based
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on the language of the claim, and provides support in citing to judicial
precedents as bases of comparisons. See Ans. 3. The Examiner also
considers the elements of the claim, separately and as an ordered
combination, to determine they are routine, well-understood, and
conventional activities previously known in the industry. See Final Act. 4;
Ans. 7-9; see also Alice, 134 S. Ct. at 2359. Thus, the Examiner has set
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132 as to why the
claims are patent-ineligible. See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011); see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection”).
Thus, we are not persuaded of Examiner error in rejecting claim 1
under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of claim 1
and of claims 3-10 and 16, which fall with claim 1.
DECISION
The Examiner’s rejection of claims 1, 3-10, and 16 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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