HIGI SH HOLDINGS INC.

Patent Trials and Appeals Board

Sep 18, 2020

2020000284 (P.T.A.B. Sep. 18, 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.
14/320,067 06/30/2014 Marcelo Aizenstein Furman Calbucci P08172US0 3912
34082 7590 09/18/2020
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
EXAMINER
SHELDEN, BION A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
crasmussen@zarleylaw.com
emarty@zarleylaw.com
kconrad@zarleylaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCELO AIZENSTEIN FURMAN CALBUCCI and
MATTHEW ROBERT CARTER

Appeal 2020-000284
Application 14/320,067
Technology Center 3600
____________

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, HIGI SH Holdings, Inc.,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 4, 5, 8, 9, and 11–20.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The “disclosure relates to a method and system for rewarding healthy
lifestyle activities.” Spec. ¶2.
The Claims
Claims 1, 4, 5, 8, 9, and 11–20 are rejected. Final Act. 1–2. No other
claims are pending. Id.; see also Appeal Br. 9–12. Claim 1 is representative
and reproduced below.
1. A method of awarding points for healthy lifestyle
activities, performed in a computer comprising a memory,
which method comprises:
[a] providing a user an exercise monitor;
[b] engaging in a physical activity by the user;
[c] recording the physical activity of the user by the
exercise monitor;
[d] in the computer memory, associating a user with a
user identifier and the exercise monitor;
[e] in the computer memory, associating the user
identifier with a reward, wherein the reward requires that the
user earn points by engaging in the physical activity to earn the
reward;
[f] by the computer, receiving a report associated with
the user identifier and calculating a number of points earned by
the user based on the report;
[g] when the user has earned enough points to earn the
reward, making the reward available to the user;
[h] wherein the report comprises at least one of a user
activity report, an exercise monitor report, an event report, and
a place report;
[i] wherein calculating points for the user based on the
report comprises adjusting a duration of or number of steps
assigned to the physical activity, adjusting a metabolic
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equivalent of task value for the physical activity, and
calculating the points based on a sigmoidal curve; and
[j] wherein calculating the points based on a sigmoidal
curve comprises obtaining the maximum and minimum possible
points, subtracting from the maximum possible points the
difference between the maximum and minimum possible points
for the physical activity multiplied by (the inverse of 0.98 plus
(e raised to the power of the product of minus 4 plus ((the
product of the measurement of the physical activity minus the
minimum measurement of the physical activity required for any
points divided by the difference between the maximum and
minimum possible points) multiplied by 8.5))).
Appeal Br. 9 (letter labels added).
The Examiner’s Rejection
The Examiner rejected all pending claims as ineligible under the
judicial exception to 35 U.S.C. § 101. Final Act. 2.
DISCUSSION
Patent Eligibility Framework
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. However,
the Supreme Court has “long held that this provision contains an important
implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. If the claims
are determined to be directed to an ineligible concept, then we “consider the
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elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
On January 7, 2019, the Director issued 2019 Revised Patent Subject
Matter Eligibility Guidance (“Revised Guidance”), which explains how the
Director directs patent-eligibility questions under the judicial exception to 35
U.S.C. § 101 to be analyzed. 84 Fed. Reg. 50–57; see also October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf).
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A.1.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated
groupings of abstract ideas in the Revised Guidance or be a “tentative
abstract idea,” with the latter situation predicted to be rare. Id. at 51–52
(Section I, enumerating three groupings of abstract ideas), 54
(Section III.A.1., describing Step 2A Prong One), 56–57 (Section III.C.,
explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we determine if the “claim as a whole integrates the
recited judicial exception into a practical application of the exception.” Id.
at 54 (Section II.A.2.). If it does, the claim is patent eligible. Id.
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If a claim recites a judicial exception and fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we evaluate the additional limitations of the claim,
both individually and as an ordered combination, to determine whether they
provide an inventive concept. Id. at 56 (Section III.B.). In particular, we
look to whether the claim:
 Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
 simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
Id.
Revised Guidance, Step 2A, Prong One
In Prong One of Step 2A, we determine whether claim 1 recites a
judicial exception (i.e., a law of nature, natural phenomenon, or abstract
idea).2
The Examiner determined that claim 1 recites abstract ideas in both
the methods of organizing human activity and mathematical concepts
categories set forth in the Revised Guidance (84 Fed. Reg. at 52). Final Act.
2–3 (regarding organizing human activity), 4–5 (regarding a mathematical
concept).

2 Appellant argues against the rejection of all claims together. Appeal Br. 5–
7. We choose claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner determined that every limitation of claim 1 recites an
abstract idea in the organizing human activity category. Id. at 2–3. The
Examiner further determined that limitations [i] and [j] recite abstract ideas
in the mathematical concepts category. Id. at 4–5.
Appellant first argues that “the claimed subject matter involves
engaging in physical activity, which cannot be performed in the abstract as
the phrase ‘physical activity’ quite literally requires non-abstract
performance.” Appeal Br. 5. This argument does not apprise us of error as
it is not supported by any legal authority cited by Appellant or known to us.
And, as the Examiner points out, the Federal Circuit previously has held
claims patent ineligible because they were directed to an abstract idea, even
though they included a physical activity. See Ans. 4 (citing In re Brown,
645 F. App’x 1014 (Fed. Cir. 2016)). Indeed, the representative claim in
Brown recited:
1. A method of cutting hair comprising;
a) defining a head shape as one of balanced, horizontal oblong or
vertical oblong by determining the greater distance between a
first distance between a fringe point and a low point of the head
and a second distance between the low point of the head and the
occipital bone;
b) designating the head into at least three partial zones;
c) identifying at least three hair patterns;
d) assigning at least one of said at least three hair patterns to each
of the said partial zones to either build weight or remove weight
in at least two of said partial zones; and
e) using scissors to cut hair according to said assigned hair
pattern in each of the said partial zones.
645 F. App’x at 1015. In Brown, the PTAB had held the challenged claims
ineligible under 35 U.S.C. § 101. Id. On appeal, the Federal Circuit
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affirmed “[b]ecause the asserted claims cover only abstract ideas coupled
with routine and conventional hair-cutting steps.” Id. Thus, Brown wholly
undermines Appellant’s first argument. Appellant does not respond to the
Examiner’s reliance on Brown. See Reply Br. 2.
Next, Appellant argues that the claimed subject matter does not fall
under any of the types of organizing human activity specified in the Revised
Guidance. Appeal Br. 5–6; see also 84 Fed. Reg. at 52 (“Certain methods of
organizing human activity—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)”).
The Examiner responds with multiple rebuttals.
First, the Examiner responds that rewarding a user for his or her
physical activity (as recited in the claim) is a commercial interaction because
“[t]he specification provides as examples of ‘rewards’: ‘merchandise, a
membership in a club or organizing, a coupon, discount, or rebate for
purchase of merchandise or membership, a donation to a charitable
organizing, cash, or the like.’” Ans. 5 (quoting Spec. ¶46). Appellant does
not dispute the Examiner’s point and instead merely points out that “all
inventions are required to have utility, i.e., value.” Reply Br. 2. Appellant
fails to apprise us of error in the Examiner’s determination that claim 1
recites an abstract idea in the methods of organizing human activity
grouping, specifically one that is a commercial interaction.
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Second, the Examiner explains: “Physical activity is unambiguously a
type of personal behavior. Incentivizing specific behavior is unambiguously
a form of managing behavior. As such, rewarding users based on their
physical activity plainly qualifies as managing personal behavior.” Ans. 6.
Appellant replies that “the Examiner ignores the ‘personal’ aspect of this
basis as the claimed invention incentivizes (external influence) physical
activity” but does not elaborate or explain. Reply Br. 3. As such,
Appellant’s Reply Brief, like its Appeal Brief, fails to apprise us of error in
the Examiner’s determination that claim 1 recites an abstract idea in the
methods of organizing human activity grouping, specifically one that
manages personal behavior.
On the record presented, we are not apprised of error in the
Examiner’s determination, under Step 2A, Prong One of the Revised
Guidance, that claim 1 recites an abstract idea, indeed multiple abstract
ideas, in the methods of organizing human activity and mathematical
concepts groupings.
Revised Guidance, Step 2A, Prong Two
In Prong Two of Step 2A, we determine whether claim 1 as a whole
integrates the recited judicial exceptions (here, abstract ideas) into a practical
application of the exceptions. In doing so, we first determine “whether there
are any additional elements recited in the claim beyond the judicial
exception(s).” 84 Fed. Reg. at 54–55. The Examiner determined that the
only additional elements of claim 1, beyond those reciting abstract ideas, are
“a computer comprising memory” and an “exercise monitor.” Final Act. 3.
The Examiner determined that both are “recited at an extremely high level of
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generality.” Id. As such, neither constitutes a “particular machine” for
purposes of the Revised Guidance. See 84 Fed. Reg. at 55.
Appellant argues that limitations [b] through [j] of claim 1 integrate
the abstract ideas into a practical application. Appeal Br. 6. In making this
argument, Appellant characterizes the recitation of “physical activity” as
“particular conduct,” the “exercise monitor” as “a specialized device,” and
the “report” as “a particularized report.” Id. (emphasis added). These re-
characterizations of certain claim terms are conclusory and not supported.
As such, they lack substance and do not apprise us of error.
Appellant also argues that “the claimed calculations within the
claimed subject matter results in a transformation of the user’s physical
activity . . . into a reward.” Id. at 6–7. This argument appears to invoke
footnote 28 of the Revised Guidance, which states:
For example, a process that transforms raw, uncured synthetic
rubber into precision-molded synthetic rubber products by using
a mathematical formula to control operation of the mold. See
MPEP 2106.05(c) for more information concerning
transformation or reduction of a particular article to a different
state or thing, including a discussion of the exemplar provided
herein, which is based on [Diamond v.] Diehr, 450 U.S. [175,]
184 [(1981)].
84 Fed. Reg. at 55 n.28. Neither Diehr nor MPEP § 2016.05(c) extends to
the purported transformation identified in claim 1. No physical thing is
transformed. Stated differently, the physical activity may lead to a reward
but it is not transformed into a reward.
Appellant also argues that the claimed “invention improves upon the
technology of rewarding physical activity by making meaningful and
inventive adjustments to the evaluation of physical activity, which is
accomplished by the inclusion of additional data points provided in the
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report and applying a particularized calculation to derive the points
associated with a physical activity.” Appeal Br. 7. This argument appears
to invoke the first bullet point listed in the Revised Guidance as to whether
an additional element may have integrated the exception into a practical
application. See 84 Fed. Reg. at 55 (“An additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field”). In the Reply Brief, Appellant argues that
“[t]he technology at issue deals with how to monitor, evaluate, and
incentivize physical activity. Particularly, the present invention results in
higher quality physical activity due to improved monitoring, evaluation, and
incentivizing hence this technology is improved.” Reply Br. 3. Thus, the
purported improvement is “higher quality physical activity.” Id. We are not
persuaded that Appellant has identified an improvement in any technology
or technical field.
Additionally, and fatal to all of Appellant’s arguments under Prong
Two, is that they are based on claim language reciting abstract ideas and are
not based on “any additional elements recited in the claim beyond the
judicial exception(s).” 84 Fed. Reg. at 54–55; see also Ans. 8 (“Every
limitation [argued by Appellant] is identified in the rejection of record as
part of the judicial exception. Limitations which are part of the judicial
exception are not available as additional elements to integrate that abstract
idea into a practical application under Step 2A Prong 2.”).
On the record presented, we are not apprised of error in the
Examiner’s determination, under Step 2A, Prong Two of the Revised
Guidance, that claim 1 fails to integrate any of the recited abstract ideas into
a practical application.
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Revised Guidance, Step 2B
In Prong Two of Step 2B, we evaluate the additional elements of
claim 1, both individually and as an ordered combination, to determine
whether they provide an inventive concept. Again, the only additional
elements are “a computer comprising memory” and an “exercise monitor.”
Final Act. 3.
As for the former, the Examiner notes that “implementing an abstract
idea on a generic computer does not add significantly more, similar to how
the recitation of the computer in the claim in Alice amounted to mere
instructions to apply the abstract idea of intermediated settlement on a
generic computer.” Id. at 3–4. As for the latter, the Examiner finds, based
on multiple references, that exercise monitors “to record physical activity,
and their use with computers was well known prior to the claimed
invention's effective filing date.” Id. at 4.
Appellant’s sole argument unique to Step 2B3 is that “the claimed
subject matter when viewed as a whole demonstrates that the claimed
subject matter is in fact patent eligible.” Appeal Br. 7. This is so, Appellant
argues, because “the data contained in the report that is subsequently
subjected to calculation demonstrates an inventive concept rendering the
claim eligible-even if the same limitations evaluated under Step 2A were
disregarded as extra-solution activity.” Id. The Examiner responds to this
argument by point out that “the report, its data, and the subsequent
processing of this data are all considered part of the abstract idea as
articulated in the rejection of record.” Ans. 10. The Examiner additionally

3 Appellant also argued “Applicant hereby incorporates the above [Step 2A,
Prong Two] remarks as they apply to 2B.” Appeal Br. 7.
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notes, correctly, that “Appellant does not argue or explain why these
limitations are additional elements beyond the identified judicial exception.”
Id.
Appellant’s Reply Brief does not refute the Examiner’s response. See
Reply Br. 3. Instead, it merely asserts that “the Examiner, contrary to
guidance[,] dissects the claimed invention rather than evaluating the claimed
subject matter ‘as a whole.’” Id. Appellant’s argument is misplaced. The
Revised Guidance states that “examiners should . . . evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).” 84 Fed.
Reg. at 56. Thus, the Examiner was correct to dissect the claim, identifying
abstract ideas and additional elements. And the Examiner was correct, in
Step 2B, to consider only the additional elements (here, “a computer
comprising memory” and an “exercise monitor”) to determine whether they
individually or together provided an inventive concept. The Examiner
determined they did not. Appellant has not apprised us of error in that
determination.
For the foregoing reasons, we affirm the rejection of claim 1 under the
judicial exception to § 101, as well as that of claims 4, 5, 8, 9, and 11–20,
which fall therewith.
SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 8,
9, 11–20
101 Judicial exception 1, 4, 5, 8, 9,
11–20

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED