Gendloff, Elie

Patent Trials and Appeals Board

Feb 12, 2020

14145972 - (D) (P.T.A.B. Feb. 12, 2020)

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.
14/145,972 01/01/2014 Elie Gendloff GEND001U1 2365
113886 7590 02/12/2020
Elie Gendloff
1209 Stratton Dr.
Vista, CA 92083
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
02/12/2020 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 ELIE GENDLOFF
____________

Appeal 2019-001163
Application 14/145,972
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22 and 40–44. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Elie Gendloff.
(Appeal Br. 2).
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Application 14/145,972

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a restaurant that serves
an ingredient to a customer before the ingredient is harvested (Abstract).
Claim 22, reproduced below, is representative of the subject matter on
appeal.

22. A method of serving a customer of a restaurant, the method
comprising an employee of the restaurant serving an ingredient of an
item to the customer before the ingredient is harvested, wherein the
ingredient is part of a plant growing in a container.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 22 and 40–44 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 22, 41, 42, and 44 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Farmer Chefs, July 2010, Alaska Airlines
Magazine, pages 66–74 (hereinafter “Farmer Chefs”).
3. Claims 40 and 43 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Farmer Chefs.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 22 is improper
because the claim is not directed to an abstract idea (App. Br. 6–8; Reply
Br. 12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–5, 11, 12, Ans. 3–10). The Examiner has first
asserted that the claimed subject matter is not “transformed” into a different
state or thing (Final Action 3, Ans. 4, 5). The Examiner has also determined
that the claim is directed to an abstract idea without “significantly more”
(Final Action 3–5).
We agree with the Appellant. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
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(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
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mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Here, the Examiner has first asserted that the claimed subject matter is
not “transformed” into a different state or thing (Final Action 3, Ans. 4, 5).
However, although the “machine-or-transformation test is a useful and
important clue,” the test “is not the sole test for deciding whether an
invention is a patent-eligible” process. See Bilski v. Kappos, 561 U.S. at
604.
The Examiner has also determined that the claim is directed to an
abstract idea without “significantly more” (Final Action 3–5, Ans. 8). The
rejection of record states that the claim is directed to “methods of organizing
human activity” and abstract concept (Final Action 3, 4, Ans. 8).
We determine the rejection has not provided a sufficient rationale to
clearly establish that the claim is directed to a “certain method of organizing
human activity”. The 2019 Revised Patent Subject Matter Eligibility
Guidance, sets forth in the abstract idea sections as examples of “(b)
[c]ertain methods of organizing human activity [as] fundamental economic
principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions).” Here, the rejection of record does not
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clearly establish how the subject matter of the claim is drawn to be
encompassed in the abstract subject matter outlined in the Guidance as a
“certain method of organizing human activities”. Here it is unclear on the
record before us for example how “serving of an ingredient of an item to the
customer before the ingredient is harvested, wherein the ingredient is part of
a plant growing in a container” is a fundamental economic practice,
commercial or legal interaction, or managing personal behavior or
interactions between people. Thus, we determine that the rationale provided
before us in the rejection has failed to establish the claim is directed to a
“certain method of organizing human activity” as set forth. As the rejection
has failed to procedurally put forth a sufficient rationale to determine that
the claim is directed to an abstract concept, the rejection of record is not
sustained.

Rejections under 35 U.S.C. § 102(a) and 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 22 is improper
because the cited prior art fails to disclose the claim limitation for “an
employee of the restaurant serving an ingredient of an item to the customer
before the ingredient is harvested, wherein the ingredient is part of a plant
growing in a container” (App. Br. 8-10, Reply Br. 2).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Farmer Chefs at page 69, paragraph 6; page 70,
paragraph 5; page 71, paragraph 1; page 72, paragraph 2; and page 73,
page 1 (Ans. 11). The Examiner has also determined that the limitation
“wherein the ingredient is part of a plant growing in a container” is a mere
label and does not distinguish the claim (Ans. 12).
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We agree with the Appellant. Here, the claim limitation “wherein the
ingredient is part of a plant growing in a container” is not a mere label, but a
limitation to the claim. The argued claim limitation requires “an employee
of the restaurant serving an ingredient of an item to the customer before the
ingredient is harvested, wherein the ingredient is part of a plant growing in a
container.” The Specification at page 6, paragraph 3, provides support for
this claim limitation. Here, the above citations to the Farmer Chefs
reference fail to disclose this argued claim limitation. As the above citations
to the prior art fail to disclose the argued claim limitation the rejection under
35 U.S.C. § 102(a) is therefore not sustained.
With respect to the rejection of dependent claims 40 and 43 under
35 U.S.C. § 103(a), the rejection of record fails to cure the deficiency of the
argued missing claim limitation or provide a rationale for such a
modification with rational underpinnings without impermissible hindsight
and this rejection is not sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 22 and 40–44 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 22, 41, 42, and 44 under 35 U.S.C. § 102(b) as anticipated
by Farm Chefs.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 40 and 43 under 35 U.S.C. § 103(a) as unpatentable over
Farm Chefs.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22, 40–44 101 Eligibility 22, 40–44
22, 41, 42,
44
102(a) Farmer Chefs 22, 41, 42,
44
40, 43 103(a) Farmer Chefs 40, 43
Overall
Outcome
22, 40–44

REVERSED