14121293 - (D) (P.T.A.B. Apr. 25, 2019)

Ex Parte Taylor

Patent Trials and Appeals BoardApr 25, 2019

14121293 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/121,293 08/15/2014 23599 7590 04/29/2019 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 Carla Taylor 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. CTAYLOR-0006-POl 1171 EXAMINER FERNSTROM, KURT ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 04/29/2019 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): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARLA TAYLOR 1 Appeal2018-004929 Application 14/121,293 Technology Center 3700 Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 33-39, 41, 44--47, 49, 50 and 55-57. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appeal Brief identifies Carla Taylor as the real party in interest. App. Br. 1. Appeal2018-004929 Application 14/121,293 CLAIMED SUBJECT MATTER The claims are directed to a book for illustrating and describing activities. Claims 33 and 44, reproduced below, are illustrative of the claimed subject matter: 33. A book comprising: at least two pages wherein at least one of the at least two pages comprises: an activity label field wherein the activity label field occupies a discrete portion of the at least one of the at least two pages, determines the subject matter content of the page on which it appears, and wherein the activity label field includes a predetermined description of the subject matter content of the page, a picture field wherein the picture field occupies a discrete portion of the at least one of the at least two pages, and wherein the picture field includes a predetermined picture or provides a suitable space for a picture to be inserted by a user which illustrates an activity and/or situation relating to the activity label field, a text field wherein the text field occupies a discrete portion of the at least one of the at least two pages, and wherein the text field includes predetermined text or provides a suitable space for text to be inserted by a user which describes the activity and/ or situation illustrated in the picture field, a parent tips field, wherein the parent tips field occupies a discrete portion of the at least one of the at least two pages, and includes predetermined information which guides a parent regarding how to discuss the activity and/or situation with a child and/or how to help the child adjust to the activity and/or situation identified in the activity label field. 44. A method for acclimating a subject to unfamiliar activities and/or environments comprising: providing a book with at least two pages to a subject wherein at least one of the at least two pages comprises: an activity label field wherein the activity label field occupies a discrete portion of the at least one of the at least two 2 Appeal2018-004929 Application 14/121,293 pages, determines the subject matter content of the page on which is appears, and wherein the activity label field includes a predetermined description of the subject matter content of the page, a picture field wherein the picture field occupies a discrete portion of the at least one of the at least two pages, and wherein the a picture field includes a predetermined picture or provides a suitable space for a picture to be inserted by a user which illustrates an activity and/or situation relating to the activity label, a text field wherein the text field occupies a discrete portion of the at least one of the at least two pages, and wherein the a text field includes predetermined text or provides a suitable space for text to be inserted by a user which describes the activity and/ or situation illustrated in the picture field, a parent tips field, wherein the parent tips field occupies a discrete portion of the at least one of the at least two pages, and includes predetermined information which guides a parent regarding how to discuss the activity and/or situation. REJECTIONS Claims 44--47, 49, 50, 55, and 562 are rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to ineligible subject matter. Claims 33-39, 41, 44--47, 49, 50 and 57 are rejected under 35 U.S.C. Â§ 102(1)(a) as being anticipated by Gunter (US 5,387,107 iss. Feb. 7, 1995). Claims 55 and 56 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Gunter in view of Ruebens (US 4,965,948 iss. Oct. 30, 1990). 2 The Examiner included claims 48 and 51-54 in the rejection statement, which, according to page 1 of the Final Action and the Claims Appendix to the Appeal Brief, are not before us for review. 3 Appeal2018-004929 Application 14/121,293 Prior-Art Rejections OPINION The claims rejected under 35 U.S.C. Â§ 102 are argued as a group (App. Br. 4--9) for which we select claim 33 as representative under 37 C.F.R. Â§ 4I.37(c)(l)(iv). The claims subject to theÂ§ 103 rejection are argued based only on dependency. App. Br. 10. The Examiner's prior-art rejections rest entirely on the applicability of the so-called printed matter doctrine. The Examiner acknowledges distinctions between the claimed subject matter and the prior art but concludes that these distinctions reside only in the content of printed matter not having a sufficient functional relationship with the substrate so as to be afforded patentable weight. Final Act. 4; see, e.g., In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.") Appellant first argues that the claim requires "fields" which does not require "specific printed matter." App. Br. 5. The exact term "fields" does not appear to be used in the Specification. However, based on the Specification and claims, as originally filed, we understand "fields" to refer to designated areas for users to insert, or already having, indicia in the form of text and images. See Spec. 6, 8, 18-19; original claim 1. Although a "field" in and of itself may merely constitute some area on a page intended for receiving, or filled with, indicia, such a field lacks concrete meaning, and would be unable to satisfy the other requirements of the claim, such as "occup[ying] a discrete portion of [a page]." According to Appellant's own argument, the fields serve to "defin[e] a physical space on a page." App. Br. 9. It is only where there is some indicia, such as printed graphics or text used 4 Appeal2018-004929 Application 14/121,293 to designate the location of a "field," or printed graphics or text are contained within the field (see, e.g., dependent claims 35-37), that these functions can be realized and a skilled artisan can positively identify the field as "occup[ying] a discrete portion of [a page]," as recited in claim 33. So, although the general concept of a "field," in the abstract, may not be "printed matter" per se, according to claim 33, read in light of the Specification and context of the entire claim, the fields, as set forth in claim 33, would be understood by the skilled artisan as being embodied and defined by the arrangement of printed matter or indicia that conveys to the user the designated areas of the page defined by the fields. It is not disputed that the arrangement of printed matter has long been held to fall outside the scope of that which is eligible for patenting under the patent statutes. In re Russell, 48 F .2d 668, 669 (CCP A 1931) ( citation omitted) ("The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute 'any new and useful art, machine, manufacture, or composition of matter,' or 'any new and useful improvements thereof"). The printed-matter doctrine originated in what has evolved intoÂ§ 101 jurisprudence. See, e.g., In re Gulack, 703 F.2d at 1385 n.8 (citing In re Sterling, 70 F.2d 910,912 (CCPA 1934) (citing In re Russell, 48 F .2d 668 (CCP A 1931 ), and In re Reeves, 62 F .2d 199 (CCP A 1932)) (both citing Guthrie v. Curlett, IO F.2d 725 (2nd Cir. 1926) ( addressing the question of whether statements of written information constitute a "manufacture"))); see also Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031-33 (Fed. Cir. 2018) ("While the doctrine's underlying rationale is in subject matter eligibility, its application has been in analyzing other patentability requirements, including novelty under 35 U.S.C. Â§ 102 [] and nonobviousness under 35 U.S.C. 5 Appeal2018-004929 Application 14/121,293 Â§ 103"). In In re Rice the predecessor of our reviewing court held method claims containing subject matter including a limitation similar to those in question, "the top surfaces of the black and white keys affording fields for indicating indicia," outside the scope of patentable subject matter because it related to "the arrangement of printed matter and other indicia upon a sheet of paper." In re Rice, 132 F.2d 140, 140-41 (CCPA 1942). For the foregoing reasons we do not agree with Appellant that claim 3 3, due to its recitations involving "fields" does not involve the arrangement of printed matter. The court in In re Gulack cautioned that early cases used a point-of- novelty approach retired by the Patent Act of 1952 and reminded that decision makers must view claims as a whole, considering all limitations, including those pertaining to printed matter. Gulack, 703 F.2d at 1385 n.8. The court framed the critical question as "whether there exists any new and unobvious functional relationship between the printed matter and the substrate." 703 F.2d at 1386. This brings us to Appellant's next argument concerning the functions of the various fields. Appellant argues the fields are "actual structures" and "function to define areas or zones for specific content types." App. Br. 5-9; Reply. Br. 4-- 6. Some, typically older, cases referred to the question of whether "printed matter" constitutes "structural" limitations. See, e.g., In re Royka, 490 F .2d 981, (CCPA 1974); In re Jones, 373 F.2d 1007, 1012 (CCPA 1967). However, the court in In re Gulack reaffirmed the principle set forth in In re Miller, 418 F.2d 1392 (CCPA 1969) that "[i]t seems to us that what is significant here is not structural but functional relationship." Gulack, 703 F.2d at 1386. Thus, our focus is on what the recited fields do. Appellant asserts, consistent with the claim language, the activity field "determines the subject matter content of the page on which i[t] appears." 6 Appeal2018-004929 Application 14/121,293 App. Br. 5. According to Appellant this "define[s] a physical space on a page of the book which includes, for example, a predetermined description defining the content of the page." App. Br. 9. Appellant asserts the function of the parent tips field and others is "to follow the activity field by conforming its content to that instructed by the activity field in the discrete portion of the page which its structure defines." App. Br. 6. All of these asserted functions involve no more than the conveying of intelligence-how content should be organized-to the reader or user. Indicia whose primary purpose is the conveying of intelligence or information to a reader is not, without more, functionally related to its substrate. In re Jones, 373 F.2d 1007, 1012 (CCPA 1967). Appellant attempts to distinguish the present case from In re N gai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and MPEP Â§ 2111.05 cited by the Examiner (Final Act. 4). Reply. Br. 5. However, Appellant acknowledges that the text and parent tips field may contain or be defined by information essentially equivalent to instructions. See App. Br. 2 ( citing instructions 57 as the text within the text field, and tips 58 as the text within the parent tips field). If simply including written instructions fails, under the printed-matter doctrine, to distinguish an invention from the prior art in terms of patentability (In re Ngai), there does not appear to be any reason why printed matter or other indicia on an ordinary page of a book, serving to define a space on that page for similar instructions, would serve to provide such a distinction. Lastly, even were "defin[ing] a physical space on a page of the book" to constitute the requisite functional relationship between the printed matter or indicia and the book substrate, because the cited prior-art also uses a field, application area 60 (see, e.g., Gunter Fig. 9; col. 5, 11. 55-57), to invite a user 7 Appeal2018-004929 Application 14/121,293 to place certain indicia within its boundary 62, such a relationship cannot be considered a "new" function for fields in books under the Gulack test. For the foregoing reasons, we sustain the Examiner's prior-art rejections. Section 1 OJ For purposes of the 35 U.S.C. Â§ 101 rejection, we select claim 44 as representative of claims 45--47, 49, 50, 55, and 56, which are argued as a group under 37 C.F.R. Â§ 4I.37(c)(l)(iv). App. Br. 4. With regard to claim 44, the Examiner held, "the claim[ is] directed to a method of providing information to a user. The mere provision of an apparatus is not sufficient to impart patentability to a method of using the apparatus." Final Act. 3. Only issues and findings of fact contested by the Appellant will be addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BP AI 2010). Appellant makes only a brief argument concerning the 3 5 U.S.C. Â§ 101 rejection, stating "the step of providing a book with at least two pages with specific content ... is clearly patentable subject matter under 35 U.S.C. Â§ 101 at least because providing an actual physical book clearly does not fall within a judicial exception." App. Br. 4; Reply Br. 1. This argument does not address the Examiner's position. The Examiner never asserts that a book itself with pages falls within a judicial exception. Rather, the Examiner held that providing such a book with pages is a generic recitation that does not render the otherwise ineligible claimed subject 8 Appeal2018-004929 Application 14/121,293 matter patent-eligible. The Examiner's holding in this regard is consistent with 35 U.S.C. Â§ 101 jurisprudence. 3 The Examiner correctly determined that claim 44 is directed to an abstract idea. Final Act. 2-3; Ans. 2-3. Claim 44 recites "[a] method for acclimating a subject to unfamiliar activities and/or environments." The method includes a single manipulative step: "providing a book with at least two pages to a subject." The substance of the claim relates not to the book but to the content of the book's pages. The pages include various "fields," which, as discussed above are designated areas of the pages where users are invited to provide certain indicia, such as a "picture", or information, such as "description[ s ]," or "tips" which amount to instructions to a user or user's parent. This falls squarely within "social activities, teaching, and following rules or instructions" that are considered abstract ideas. See, e.g., Eligibility Guidance at 52. Because claim 44 is directed to managing personal behavior, involving relationships or interactions between people and/or their environments, claim 44 is directed to a method of organizing human activity that falls within a judicial exception to patent-eligible subject matter. The step of "providing a book with [] pages" is not a meaningful limitation in the context of claim 44. Rather, it represents a drafting effort to render the claim patent-eligible. Reciting a generic, unimproved, book used only for its ordinary purpose of providing a tool to deliver the content described above does not add meaningful limitations to the claim to integrate the abstract idea into any practical application. Ans. 4--6. Furthermore, there can be no dispute that books, generally, are well-known, routine, and 3 See, e.g., 2019 Revised Patent Subject Matter Eligibility Guidance (84 Fed. Reg. 50 (Jan. 7, 2019) ("Eligibility Guidance") (available at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf)). 9 Appeal2018-004929 Application 14/121,293 conventional and therefore do not supply the requisite inventive concept to the otherwise ineligible claim 44. Ans. 4---6. Appellant's argument that "the step of providing a book with at least two pages with specific content" renders the claimed subject matter patent-eligible is directly foreclosed by the holdings of In re Rice where the claim at issue recited a "paper sheet," and In re Russell where the claim at issue recited a "directory." The remaining limitations relate to the content of the book and, for the reasons discussed above with regard to the prior-art rejection, constitute printed matter lacking a significant functional relationship with its substrate pages. The Federal Circuit has recognized printed matter falls outside the scope of 35 U.S.C. Â§ 101. See, e.g., In re Chatfield, 545 F.2d 152, 157 ( CCP A 197 6) ("Some inventions, however meritorious, do not constitute patentable subject matter, e.g., printed matter .... " (Citation omitted)) (cited with approval inAstrazeneca Lp v. Apotex, Inc., 633 F. 3d 1042, 1064---65 (Fed. Cir. 2010)). The Federal Circuit has held that where "the only arguably unconventional aspect of the recited method [] is printed matter, which falls outside the scope ofÂ§ 101, the rejected claims do not recite an 'inventive concept' sufficient to 'transform'" the claimed subject matter into a patent- eligible application of the abstract idea." In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-62 (Fed. Cir. 2018); see also Rice, 132 F.2d at 141 ("we see nothing in appellant's alleged invention other than the arrangement of printed matter and other indicia upon a sheet of paper."); In re Russell, 48 F .2d at 668---69 ("It may be observed, however, that the only matter claimed to be new is the alleged novel arrangement of names. The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute 'any new and useful art, machine, 10 Appeal2018-004929 Application 14/121,293 manufacture, or composition of matter,' or 'any new and useful improvements thereof,"') ( emphasis added). Accordingly, we sustain the Examiner's 35 U.S.C. Â§ 101 rejection. DECISION The Examiner's rejections are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11