Ex Parte Stanley et al

Patent Trial and Appeal Board

Mar 26, 2015

12119593 (P.T.A.B. Mar. 26, 2015)

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.
12/119,593 05/13/2008 Maurice Stanley 08-568 3332
20306 7590 03/26/2015
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
03/26/2015 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 MAURICE STANLEY
and
TEJ PAUL KAUSHAL
____________________

Appeal 2012-011572
Application 12/119,593
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–8, 10, 11, 16, and 20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

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Application 12/119,593

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BACKGROUND
Appellants’ invention is directed to “a method of providing accurate
fit recommendations for individuals for footwear and/or garments” (Spec.
1:5–6).
Claim 1 is illustrative:
1. A method of providing a user with an indication of fit for at
least one article of interest comprising using a computer to
perform the steps of:
taking user body size data relating to the user;
taking reference body size data associated with the at
least one article wherein the reference body size data comprises
a set of critical dimensions ranges or limits or a set of
clusterings or groupings of measurements derived from body
size data of a plurality of people known to fit the particular
article; the method previously comprising the step of obtaining
body size data from a plurality of people along with details of at
least one article known to fit each of said people; and
comparing the user body size data with the reference
body size data and indicating whether said article would fit the
user wherein the method of providing an indication of fit does
not involve using measurements of the particular article.

Appellants appeal the following rejections:
Claims 1–8, 10, 11, 16, and 20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1–8, 10, 11, 16, and 20 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1–4, 8, 10, and 11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Cook (US 6,879,945 B1, iss. Apr. 12, 2005).
Claims 5–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Cook and Nguyen (US 7,114,260 B2, iss. Oct. 3, 2006).
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Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cook.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cool and Genest (US 6,741,728 B1, iss. May 25, 2004).
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner finds that claims 1–8, 10, 11, 16, and 20 fail the
machine-or-transformation test because the claimed steps are neither tied to
a particular machine or apparatus nor physically transform the underlying
subject matter to a different state or thing (Ans. 6–7). The Examiner found
that the inclusion of a “computer” in the preamble of claim 1 was a nominal
recitation, and as such, determined that claim 1 fails to satisfy the first prong
of the test (id.) The Examiner also found that claim 1 fails to include any
steps that would result in an article being transformed from one state into
another, and determined that claim 1 also fails the second prong of the test
(id. at 7) Although the Examiner appears to acknowledge that the Supreme
Court clarified in Bilski v. Kappos, 561 U.S. 593 (2010) that “[t]he machine-
or-transformation test is not the sole test for deciding whether an invention is
a patent-eligible ‘process’” (see Ans. 6; see also Bilski, 561 U.S. at 604), the
Examiner nevertheless concludes that claims 1–8, 10, 11, 16, and 20 are
directed to non-statutory subject matter, based solely on their failure to
satisfy the machine-or-transformation test.
Accordingly, the Examiner’s analysis is incomplete inasmuch as it
reflects consideration of the machine-or-transformation test, only, which the
Supreme Court has made clear is not dispositive of the § 101 inquiry. As
such, the Examiner has failed to establish a prima facie case of patent-
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ineligibility. In view of the foregoing, we do not sustain the Examiner’s
rejection of claims 1–8, 10, 11, 16, and 20 under 35 U.S.C. § 101.

Rejection under 35 U.S.C. § 112, second paragraph
Appellants argue the Examiner erred in rejecting claims 1–8, 10, 11,
16, and 20 under 35 U.S.C. § 112, second paragraph, as indefinite (App. Br.
7–8; Reply Br. 4–5). The Examiner maintains that independent claim 1 is
indefinite because “it is unclear how a proper fit is determined without
tak[ing] in[to] consideration the size of the particular article” (Ans. 5 and
16). However, we agree with Appellants that a person of ordinary skill in
the art would understand what is claimed when claim 1 is read in light of the
Specification (App. Br. 7–8). In particular, the Specification describes that it
determines a proper fit by comparing the user’s body size data with body
size data of other people to determine a match in body size (Spec. 4:20–27)
and “[o]nce such a match has been determined the particular article known
to fit the particular body data size can be identified” (id. at 9:25–29).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1, and its dependent claims 2–8, 10, 11, 16, and 20
under 35 U.S.C. § 112, second paragraph. See, e.g., Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test
for definiteness under 35 U.S.C. § 112, second paragraph, is whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification).

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Rejections under 35 U.S.C. §§ 102(b) and 103(a)
Appellants argue that the Examiner erred in asserting that Cook
discloses “indicating whether said article would fit the user wherein the
method of providing an indication of fit does not involve using
measurements of the particular article,” as recited in claim 1. (App. Br. 8–
10; Reply Br. 5–7).
In contrast, the Examiner has determined that the argued limitation is
found in the Abstract of Cook. (Ans. 9–10 and 17).
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We concur with Appellants’
contention that the Examiner erred because Cook fails to disclose
“indicating whether said article would fit the user wherein the method of
providing an indication of fit does not involve using measurements of the
particular article,” as claim 1 requires.
In this regard, we agree with Appellants that the shoe
recommendation described in Cook “utilizes size measurements and fit
assessments made for the current production run for each respective
footwear model that is available for purchase.” (App. Br. 9; citing Cook
5:23–28). The portion of Cook, cited by the Examiner, discloses that
“recommended footwear size is determined for the selected footwear model
based on the received foot size information, a length adjustment factor for
the selected footwear model and past product fit information” (Abstr.).
Based on this disclosure, the Examiner concluded that Cook’s length
adjustment factor is “determined based on the human assessments regarding
sizing received from the plurality of human subjects known to fit the
particular article,” and as such, discloses the argued limitation (see Ans. 17;
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citing Cook 6:35–60). However, Cook describes that its length adjustment
factor is based on both fit assessment (i.e., human assessment) and size
measurements of the shoe model (e.g., Brannock adjusted size) when used as
a basis for generating a foot size recommendation (Cook 5:28–30; see also
Cook 7:20–8:61). Therefore, although the length adjustment factor
described in Cook is based on a human assessment component, the
Examiner fails to appreciate that the human assessment component is just
one component of the length adjustment factor described by Cook, and as
such, fails to provide an indication of fit without using measurements of the
particular article, as called for in claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejections
of independent claim 1, and its dependent claims 2–8, 10, 11, 16, and 20.

DECISION
We reverse the Examiner’s rejection of claims 1–8, 10, 11, 16, and 20
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
We reverse the Examiner’s rejection of claims 1–8, 10, 11, 16, and 20
under 35 U.S.C. § 112, second paragraph, as being indefinite.
We reverse the Examiner’s rejections of claims 1–8, 10, 11, 16, and
20 under 35 U.S.C. §§ 102(b) and 103(a).

REVERSED
hh