Ex Parte Martin

Patent Trial and Appeal Board

Jun 28, 2018

14176046 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/176,046
107947 7590
Todd M. Martin
5 Oak Place
Timaru, 7910
NEW ZEALAND
FILING DATE FIRST NAMED INVENTOR
02/08/2014 Todd M. Martin
07/02/2018
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.
TMM.0003-01000 1074
EXAMINER
MCATEE,PATRICK
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
in2ironman@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TODD M. MARTIN
Appeal2016-005482
Application 14/176,046
Technology Center 3600
Before JOSEPH L. DIXON, JEREMY J. CURCURI, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005482
Application 14/176,046
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
8, 10-15, and 21-30. Claims 1-7, 9, and 16-20 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to a system and method for providing an
athlete with a performance profile and tracking the usage of athletic
equipment. Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A system for tracking usage of athletic equipment of a
user, compnsmg:
a database server including a user database for maintaining
records of users registered to access said database server;
a training log server configured to:
receive and store data from each registered user
regarding a category of athletic activity in which the
registered user engaged;
receive and store data from each registered user
regarding a distance the registered user trained for a given
day for each category of athletic activity;
receive and store data from each registered user
regarding an amount of time the registered user trained for
each category of athletic activity;
calculate a time-based total distance for each
category of athletic activity; and
generate a graphical representation of at least one of
the calculated time-based total distances;
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a processor configured to determine whether the user is a
registered user based on the records maintained in said user
database, said processor being configured to generate a graphical
user interface having a plurality of fields for entering data
regarding the use of the athletic equipment used by the registered
user, at least one of said fields pertaining to the date of first use
of the athletic equipment by the registered user, another of said
fields pertaining to a warning value enterable by the registered
user, said processor being configured to: track usage of the
athletic equipment based on usage data received and stored by
said training log server, issue a warning to the registered user that
the athletic equipment is approaching maximum usage once the
usage reaches the warning value entered by the registered user,
and issue an alert to the user after determining that the maximum
usage has been reached; and
a wearable GPS-enabled mobile device which is internet
ready, said GPS mobile device being configured to communicate
training data live to said training log server as the user is training
to automatically update said training log server.
REFERENCES 1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee
Lee
Peterman
Lee et al.
us 2,146,304
US 6,442,505 B 1
US 2007/0288157 Al
US 2011/0133918 Al
Feb. 7, 1939
Aug. 27, 2002
Dec. 13, 2007
June 9, 2011
1 We leave it to the Examiner to further consider the Lee 6,837,827 patent
which is incorporated by reference in para. 29 of the Peterman reference and
the Examiner may want to also consider the Kelsch reference ("Ultra
Cycling» Training Log Online Options,"
http://www.blog.ultracycle.net/2010/05/training-log-online) both of which
are of record in the prosecution history.
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Application 14/176,046
Strava "GPS Bike Routes and Cycling Training Log," from "Way Back
Machine"
' https://web.archive.org/web/20100415021619/http://www.strava.com/
REJECTIONS
The Examiner made the following rejections:
Claims 8, 10-15, and 21-30 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 3-5.
Claims 8, 10-15, 21, 22, 29, and 30 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Strava, in view of Lee '505, further in
view of Lee '304, and further in view of Peterman. Final Act. 6-27.
Claims 25-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Strava, in view of Lee '505, and further in view of Lee
'304. Final Act. 28-36.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Strava, in view of Lee '505, further in view of Lee '304,
further in view of Peterman, and further in view of Lee '918. Final Act. 37-
40.
ANALYSIS
35 U.S.C. § 101
In Alice, the Supreme Court sets forth an analytical "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 Banklnt'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to "determine whether the
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claims at issue are directed to one of those patent-ineligible concepts," such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the 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.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant post-solution activity."' Bilski v. Kappas, 561 U.S.
593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, the Examiner maintains
that independent claims 8 and 25 are directed to abstract ideas. The
Examiner finds that the claims are directed to:
non-statutory subject matter because the claims as a whole,
considering all claim elements both individually and in
combination, do not amount to significantly more than an
abstract idea. The claims are directed to the abstract idea of
receiving, storing, organizing, and outputting data, which is a
fundamental economic practice long-applied and well-known in
many areas of business. For example, in Cyberphone Sys. V.
CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014), the
Federal Circuit found that using categories to organize, store, and
transmit information is well-established (Interim Guidance at
7 4,630-31 ). Here, the claims receive and store data provided by
a user (e.g., bicycle equipment and usage data), organize the data
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by categories (e.g., by bicycle, by activity, by component), and
output data based on a category or comparison (e.g., by time, by
distance, by activity, by comparing data to a preset value to
output a warning).
The additional elements or combination of elements in the
claims and specification other than the abstract idea per se
amounts to no more than instructions to implement the abstract
idea in a web-based platform, and merely use generic computer
infrastructure to perform generic computer functions that are
well-understood, routine and conventional activities previously
known to the industry.
(Final Act. 4). With regards to independent claim 8, the Examiner further
finds that although claim 8 "add[ s] a degree of particularity with respect to
the context in which the abstract idea is applied (e.g., athletic training), the
concept embodied by the majority of the limitations describes only the
abstract idea of receiving, storing, organizing, and outputting data." (Final
Act. 5). The Examiner further maintains
the claimed invention is directed to the abstract idea of using
categories to organize, store, and transmit data, as explained on
page 4 of the Office action dated June 2, 2015. The abstract idea
is defined by the limitations a database server including a user
database for maintaining records of users registered to access
said database server (i.e., storing data); a training log server
configured to: receive and store data from each registered user
regarding a category of athletic activity in which the registered
user engaged (i.e., use categories to receive, organize, and store
data); receive and store data from each registered user regarding
a distance the registered user trained for a given day for each
category of athletic activity (i.e., use categories to receive,
organize, and store data); receive and store data from each
registered user regarding an amount of time the registered user
trained for each category of athletic activity (i.e., use categories
to receive, organize, and store data); generate a graphical
representation of at least one of the calculated time-based total
distances (i.e., use categories to transmit, display, or output data);
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a processor configured to determine whether the user is a
registered user based on the records maintained in said user
database, said processor being configured to generate a graphical
user interface having a plurality of fields for entering data
regarding the use of the athletic equipment used by the registered
user, at least one of said fields pertaining to the date of first use
of the athletic equipment by the registered user, another of said
fields pertaining to a warning value enterable by the registered
user, (i.e., using categories to receive data); a wearable GPS-
enabled mobile device which is internet ready, said GPS mobile
device being configured to communicate training data live to said
training log server as the user is training to automatically update
said training log server. (i.e., receiving and using categories to
organize and store data).
(Adv. Act. 3). In the Examiner's Answer, the Examiner reiterates the
sweeping statement regarding the finding of the abstract idea from the Final
Rejection:
"The claims are directed to the abstract idea of receiving, storing,
organizing, and outputting data, which is a fundamental
economic practice long-applied and well-known in many areas
of business" (FR p4). The identification of the abstract idea is
based on a comparison to the Federal Circuit's analysis of the
claims in in Cyberfone Sys. v. CNN Interactive Grp., 558 Fed.
Appx. 988 (Fed. Cir. 2014). In Cybeifone, the Federal Circuit
found that using categories to organize, store, and transmit
information is well-established (2014 IEG at 74,630-31). Here,
the claims receive and store data provided by a user ( e.g., bicycle
equipment and usage data), organize the data by categories ( e.g.,
by bicycle, by activity, by component), and output data based on
a category or comparison ( e.g., by time, by distance, by activity,
by comparing data to a preset value to output a warning). (FR
p4). This is also consistent with Appellant's specification at page
1 describing the "Field of the Invention" as "a system for storing
training data entered by an athlete, associating information
with the athlete that is related to the athlete's participation in
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training and/or racing actlv1tles, and generating a profile
specific to the athlete." (App. Spec. p 1, emphasis by Examiner).
(Ans. 4--5).
Appellant's arguments, discussed below along with a discussion of
various findings and conclusions of the Examiner, raise the dispositive issue
of whether or not the claims are directed to an abstract idea at all. As further
explained below, we find the Examiner has overgeneralized the claims. Put
another way, we find the claims are directed to a technological improvement
in the computer arts and are not directed to an abstract idea at all for the
reasons explained by Appellant, and noted below.
We find the Examiner provides little analysis and factual support for
the proffered findings that elements of the claimed invention are "well-
known, routine, and conventional" in many areas of business. Additionally,
the Examiner maintains that "Claim 8 does not recite any additional
elements that amount to significantly more than the abstract idea of using
categories to organize, store, and transmit information." (Ans. 12). The
Examiner relies upon a comparison to the claims in Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir.
2014) ("Content Extraction" or "CET'). (Ans. 13). We find the Examiner's
reliance upon Content Extraction to overgeneralize the finding of the
Content Extraction case where those claimed functions were 1) collecting
data, 2) recognizing certain data within the collected data set, and 3) storing
that recognized data in a memory and the Federal Circuit found the general
concept of data collection, recognition, and storage were undisputedly well-
known.
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Additionally, the Examiner finds the present claims recite a "wearable
GPS-enabled mobile device, which is internet ready," a generic database
server, a generic training log server, and a generic processor to carry out
"receiving and storing" of data including live updates from the mobile
device. (Ans. 13).
We find the Examiner's findings do not correspond to the express
language of the claims and overgeneralize in the finding and conclusion in
Content Extraction.
Appellant maintains "[ t ]he claimed combination results in an
improvement in the field of wireless athletic tracking and monitoring
technology since a user no longer needs to wait until the completion of a
training exercise before training data is uploaded to an online database."
(App. Br. 10). We agree with Appellant. Additionally, Appellant contends:
the GPS-enabled mobile device being configured to
communicate training data live to the training log server results
in an improvement to the GPS-enabled mobile device itself
because the same amount of memory normally needed to store
training data in the GPS-enabled mobile device is no longer
required. A reduction in memory required also permits the GPS-
enabled mobile device to be of lessor size, which is an advantage
to users during their training activities.
(App. Br. 11 ). Again, we agree with Appellant. In short, these arguments
from Appellant persuade us that the claims are not directed to an abstract
idea at all.
The Examiner further maintains that
Like the invention in CET, the present invention merely uses
existing technological components in conventional and routine
ways to carry out the abstract idea of organizing, storing,
associating, processing, and otherwise "managing" data. What
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that data represents is inconsequential because it would not
change how the abstract idea is carried out.
(Ans. 14).
We find the Examiner's conclusions oversimplify and generalize the
claim limitations in the Alice/Mayo analysis and USPTO Guidelines to be
based upon the Examiner's sweeping finding regarding the abstract idea.
In response to Appellant's argument that "the claims require a
particular machine because they recite a processor that becomes a 'special
purpose machine' programmed to perform particular functions," (App. Br.
11-12), the Examiner finds "a specially programmed computer is no longer
sufficiently particular for purposes of subject matter eligibility under section
101." (Ans. 15). The Examiner further maintains that it was the Supreme
Court's desire to exclude from eligibility those claims that make
patentability dependent on the draftsperson's art by stating the abstract idea
with instructions to "apply it" using a generic or programmable computer.
(Ans. 15).
Again, we find the Examiner's analysis to be flawed based upon an
over generalization of the abstract idea and oversimplification of the recited
claim functions. We find the recited claim limitations to be more than
"apply it" and more than dependent on the draftsperson's art by stating the
abstract idea with instructions to "apply it" using a generic or programmable
computer.
Because we find the Examiner has erred in the finding of an abstract
idea and basing of the remainder of the analysis upon this finding, we cannot
sustain the Examiner's conclusion of a lack of patent eligible subject matter
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of independent claim 8 and its respective dependent claims based upon the
Examiner's stated analysis.
The Examiner relies upon the same factual findings and conclusions
with regards to independent claim 25, which is directed to a different
combination of limitations than recited in independent claim 8 but
sufficiently similar with respect to the Examiner's error. (Ans. 19--20). As a
result, we find the Examiner has erred in the finding of an abstract idea and
based the remainder of the analysis upon this finding, we cannot sustain the
Examiner's conclusion of a lack of patent eligible subject matter of
independent claim 25 and its respective dependent claims based upon the
Examiner's stated analysis.
35 U.S.C. § 103
With regards to the obviousness rejection of claim 8, the Examiner
relies upon a combination of four references to teach and suggest the
claimed invention.
The Examiner relies upon the Strava reference to teach and suggest
the use of an interface to track components usage and to disclose an interface
to provide a suggested useful lifetime of some bicycle parts. (Final Act.
10-11). The Examiner relies upon the Lee '505 reference for tracking time
and distance of bicycle rides and disclosing and suggesting a warning value
enterable by a registered user and an alert to the user for the maximum
usage. The Examiner finds that when the countdown is reached an alert will
be given for the specific components or function. (Final Act. 12-14).
The Examiner further reasons and concludes that:
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Therefore, at the time of the invention it would have been
obvious to a person having ordinary skill in the art to modify the
web-based platform for tracking bicycle usage data such as the
use of specific components of the bicycle, as disclosed by Strava,
by incorporating a user preset limit on the use and a warning
when use approaches the limit, as taught by Lee '505, because
the combination of Strava in view of Lee '505 is merely a
combination of prior art elements according to known methods
to yield predictable results.
(Final Act. 13). Moreover, the Examiner reasons and concludes:
[I]t would have been obvious to modify the user preset warning
value disclosed by the combination of Strava in view of Lee '505
to generate both an alert when the preset limit is exceeded as well
as an alert or warning when the usage approaches but has not yet
exceeded the maximum usage value. Such a modification would
simply require applying the same technology used to detect when
the usage exceeds a maximum use threshold to detect when the
usage is within an amount or ratio of that maximum value, and
issue the warning in a similar manner. Because Lee '505 already
shows how to issue the alert for one preset value, it would have
been within the skill of a person having ordinary skill in the art
to complete the modification to issue a warning when
approaching the maximum value, which is merely a combination
of prior art elements according to known methods to yield
predictable results, as shown by Lee '304.
(Final Act. 14--15).
We find the Lee '304 reference is a mechanical speed signaling means
for automotive vehicles from 1939. The Lee '304 reference discloses "a
speedometer having provision for calling the driver's attention to the fact
that the speed of the vehicle has reached or is about to reach the maximum
lawful speed." (Lee '304, col. 1, 11. 3-7).
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Appellant contends that attempting to modify the combination of
Strava and Lee '505 with the dial-operated speed monitoring device of Lee
'304 would lead to unpredictable results because the device of Lee '304
permits a car driver to receive a warning anytime the speed exceeds a
predetermined setting, which may happen multiple times during an ordinary
drive. (App. Br. 35). Appellant further argues that the Lee '304 reference is
not reasonably pertinent to the entire problem being solved by the claimed
invention of claim 8, and the reference cannot reasonably be said to be a
familiar item to an inventor addressing the alerting of an athlete that their
athletic equipment is approaching a maximum usage before the maximum
usage occurs. (Reply Br. 15).
We agree with Appellant's arguments, and we disagree with the
Examiner's findings and conclusions. We find the Examiner has not shown
a reference which has both a warning and an alert. The Lee '304 reference
merely shows feedback to an operator regarding the usage of the vehicle
which is a single indicationjust as the Lee '505 reference with the alert. We
disagree with the Examiner because the indication of being over a speed
limit does not indicate or warn the user of a maximum usage as tracked by
the training log server, but merely is an over a limit with a variable rather
than an accumulated usage.
The Examiner further finds and concludes that:
implementing the early-warning feature of Lee '304 in the device
of the combination of Strava in view of Lee '505 is merely an
"application of modem electronics to a prior art mechanical"
device, which is a simple substitution of one known element for
another known element to obtain predictable results.
(Ans. 16). The Examiner further finds:
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it is well known that vehicle operators' attention is often
preoccupied by "watching the road" and they fail to observe
indications of vehicle usage parameters in a timely manner (Lee
'304 cl:7-20) and as such an early warning prior to exceeding a
maximum value allows the operator to make an informed
decision about continued usage of the vehicle.
(Final Act. 16).
We disagree with the Examiner's combination of teachings and line of
reasoning to reach the claim limitations of "track usage of the athletic
equipment based on usage data received and stored by said training log
server, issue a warning to the registered user that the athletic equipment is
approaching maximum usage once the usage reaches the warning value
entered by the registered user, and issue an alert to the user after determining
that the maximum usage has been reached" because we find none of the
references identified by the Examiner teach or suggest both a warning and
an alert. Therefore, the Examiner is speculating in the combination of
discrete elements to reach the combination of claimed elements.
Additionally, we agree with Appellant that the Examiner's rejection
involves impermissible hindsight reconstruction. (App. Br. 43--44; Reply
Br. 16).
Accordingly, we do not sustain the Examiner's obviousness rejection
of claim 8. We also do not sustain the Examiner's obviousness rejection of
claim 25 for these same reasons. Finally, we do not sustain the Examiner's
obviousness rejections of the remaining claims for these same reasons. That
is, we do not sustain any of the various grounds of rejection based on
obviousness.
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CONCLUSIONS
The Examiner erred in rejecting claims 8, 10-15, and 21-30 based
upon a lack of patent-eligible subject matter under 35 U.S.C. § 101, and the
Examiner erred in rejecting claims 8, 10-15, and 21-3 0 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, reverse the Examiner's decision rejecting
claims 8, 10-15, and 21-30 based upon a lack of patent eligible subject
matter under 35 U.S.C. § 101, and reverse the Examiner's decision rejecting
claims 8, 10-15, and 21-30 based upon obviousness under 35 U.S.C. § 103.
REVERSED
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