Ex Parte Torres

Patent Trial and Appeal Board

Dec 12, 2018

12805871 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/805,871 08/23/2010
91887 7590 12/14/2018
Capitol Patent & Trademark Law Firm, PLLC
P.O. BOX 1995
Vienna, VA 22183
FIRST NAMED INVENTOR
Joreida Eugenia Torres
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.
3039-001 8329
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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):
info@cappat.com
j curtin @cappat.com
knetznik@cappat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOREIDA EUGENIA TORRES
Appeal2017-007752 1
Application 12/805,871 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-5, 7-11, 13-23, 25-29, and 31-36. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
January 17, 2017) and Reply Brief ("Reply Br.," filed April 28, 2017), and
the Examiner's Answer ("Ans.," mailed February 28, 2017) and Final Office
Action ("Final Act.," mailed August 4, 2016).
2 Appellant identifies the inventor, Joreida Torres, as the real party in
interest. App. Br. 1.
Appeal2017-007752
Application 12/805,871
CLAIMED INVENTION
Appellant's claimed invention relates to methods and devices for
providing fashion advice (Spec., Title).
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A device for generating fashion advice comprising:
an image storage section for storing an image of a clothing
item;
an image processing section for analyzing the image;
memory and processing sections for storing and
processing characteristics of the item;
a recommendation section for generating a wardrobe
recommendation based on the item and fashion industry
standards; and
a personal profile section for a user, the profile section
operable to store a personal profile of a user, the profile
comprising the user's preferred fashion style, the personal profile
section is further operable to generate a fashion avatar to interact
with the user to provide fashion advice.
REJECTIONS
Claims 1, 3-5, 7-11, 13-23, 25-29, and 31-36 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 3, 4, 7-9, 11, 13, 14, 16, 19-22, 24--27, 29, 31, 32, and 34
are rejected under 35 U.S.C. § I03(a) as unpatentable over Van Overveld
(US 2002/0045959 Al, pub. Apr. 18, 2002) and Cheng et al.
(US 2009/0094260 Al, pub. Apr. 9, 2009) ("Cheng").
2
Appeal2017-007752
Application 12/805,871
Claims 5, 10, 15, 23, 28, and 33 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Van Overveld, Cheng, and Smith et al.
(US 2009/0315893 Al, pub. Dec. 24, 2009) ("Smith").
Claims 17, 18, 35, and 36 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Van Overveld, Cheng, and Oh et al.
(US 2008/0222262 Al, pub. Sept. 11, 2008) ("Oh").
ANALYSIS
Patent-Eligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int'!, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
3
Appeal2017-007752
Application 12/805,871
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "generat[ing] fashion advice," which the
Examiner reasoned can be performed with, or without, the assistance of a
computer, and is similar to other concepts that the courts have identified as
abstract (Final Act. 2-3 ( citing SmartGene, Inc. v. Advanced Biological
Labs, SA, 555 F. App'x 950 (Fed. Cir. 2014))). The Examiner also
determined that the additional elements, beyond the abstract idea ( which the
Examiner identified as the "network server" and "avatar") do not "amount to
significantly more than the judicial exception because they would be utilized
in a conventional computer implementation of the abstract idea" (id. at 3).
We agree with Appellant that the Examiner, in characterizing the
claims as directed to "generat[ing] fashion advice," has described the claims
at a high level of abstraction, and has seemingly all but ignored that the
claims call for "generat[ing] an avatar to interact with the user to provide
fashion advice" (App. Br. 3-5). To that extent, the Examiner has failed to
4
Appeal2017-007752
Application 12/805,871
consider the character of the claims as a whole and, thus, failed to conduct a
proper analysis under § 101.
Responding to Appellant's argument in the Answer, the Examiner
notes that "avatars are not inventive concepts" - they are "notorious1y old
and well known" (Ans. 12). And although the Examiner acknowledges that
"the particular implementation of an avatar may be inventive," the Examiner
notes that "[A]ppellant does not provide any description of how to make and
use the avatar" (id.). The Examiner, thus, concludes that "the [claimed]
interactive avatar must be a generic interactive avatar such as is well known
in the industry and is in no way inventive" and that "the mere fact that
[ A Jppellant is claiming an avatar cannot be inventive in and of itself and
cannot overcome a 101 rejection" (id.).
The difficulty with the Examiner's analysis is that inventiveness is not
the test for determining whether a claim is directed to an abstract idea. "The .._,
'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 Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
("Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 1 01 inquiry.").
Although the Examiner ostensibly contends otherwise, it does not
automatically follow that if a claim is not inventive, the claim is, therefore,
abstract. Nor does inventiveness alone automatically preclude a finding that
a claim is directed to an abstract idea. As the Court explained in Mayo, a
5
Appeal2017-007752
Application 12/805,871
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
The Examiner has not sufficiently established that the claims are
directed to an abstract idea. Therefore, we do not sustain the Examiner's
rejection of claims 1, 3-5, 7-11, 13-23, 25-29, and 31-36 under 35 U.S.C.
§ 101.
Obviousness
Independent Claims 1 and 19 and Dependent Claims 3, 4, 7-9, 11, 13, 14,
16, 20---22, 24-27, 29, 31, 32, and 34
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1 and 19 under 35 U.S.C. § 103(a) because
neither Van Overveld nor Cheng, individually or in combination, discloses
or suggests "generat[ing] a fashion avatar to interact with the user to provide
fashion advice," as recited in claim 1, and similarly recited in claim 19 (App.
Br. 7). The Examiner cites Van Overveld as disclosing the argued limitation
(Final Act. 5 (citing Overveld ,r,r 74, 81, and 92)). But we find nothing in
the cited portions of Van Overveld that discloses or suggests a fashion avatar
that interacts with a user to provide the user with fashion advice.
Overveld is directed to a method and system for making
recommendations on what to wear (Overveld, Abstract), and discloses, with
reference to Figure 2, a rendering system 200 for presenting a
recommendation to a user (id. ,r 74). Overveld describes that the
recommendation "could come in the form of a small set of rendered images
of a virtual mannequin, optionally with the user's face and posture, dressed
in the suggested clothes" (id.). However, as Appellant observes, the Van
Overveld mannequin does not communicate with a user (Reply Br. 3).
6
Appeal2017-007752
Application 12/805,871
Instead, the mannequin is a static display (id.). And, although Van Overveld
discloses communicating recommended clothing to a user via text or voice
output, we agree with Appellant that Van Overveld discloses this as an
alternative to its mannequin (id. at 3--4).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 19 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of dependent
claims 3, 4, 7-9, 11, 13, 14, 16, 20-22, 24--27, 29, 31, 32, and 34.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Dependent Claims 5, 10, 15, 17, 18, 23, 28, 33, 35, and 36
Each of claims 5, 10, 15, 17, 18, 23, 28, 33, 35, and 36 ultimately
depends from one of claims 1 and 19. The rejections of these dependent
claims do not cure the deficiency in the Examiner's rejection of independent
claims 1 and 19. Therefore, we do not sustain the Examiner's rejections
under 35 U.S.C. § 103(a) of claims 5, 10, 15, 17, 18, 23, 28, 33, 35, and 36
for the same reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 1, 3-5, 7-11, 13-23, 25-29, and
31-36 under 35 U.S.C. § 101 is reversed.
The Examiner's rejections of claims 1, 3-5, 7-11, 13-23, 25-29, and
31-36 under 35 U.S.C. § 103(a) are reversed.
REVERSED
7