Baxter D. Montgomery

Patent Trials and Appeals Board

Oct 9, 2019

12710346 - (D) (P.T.A.B. Oct. 9, 2019)

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.
12/710,346 02/22/2010 Baxter D. Montgomery BAXT0001 8491
65134 7590 10/09/2019
Ari Pramudji
Pramudji Law Group PLLC
800 Gessner, Suite 975
Houston, TX 77024
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
ari.pramudji@pro-ip.com
monica.owens@pro-ip.com
paralegal@pro-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BAXTER D. MONTGOMERY
____________________

Appeal 2019-002440
Application 12/710,3461
Technology Center 3700
____________________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–4, 6, 7, 9–11, 14, 15, and 17–29. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention “relate[s] to classifying foods into food
categories based on their nutritional characteristics.” Spec. ¶ 2. Below, we
reproduce independent claim 1 as illustrative of the appealed claims.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Baxter D.
Montgomery. Appeal Br. 3.
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1. A method, comprising:
receiving a description of a food;
determining whether the food is non-animal-based or
animal-based;
determining an extent in which the food is processed;
determining one or more nutritional characteristics of the
food;
determining an origin of the food;
determining one or more possible effects of the food on a
human body;
categorizing, using a microprocessor, the food to one of a
plurality of food level numbers based on whether the food is non-
animal-based or animal-based, the extent of processing, the
nutritional characteristics, the origin, and the possible effects on
the human body, wherein categorizing the food comprises:
categorizing the food in Food Level 0 if the food is
non-animal-based and juiced, blended, or steeped in water
as a tea at a temperature less than 100°F;
categorizing the food in Food Level 1, 2 or 3 if the
food is ripened, chopped, minced, frozen, or pureed;
categorizing the food in Food Level 4 if the food is
warmed, dried or dehydrated at a temperature less
than 155°F, steamed for less than 4 minutes or boiled for
less than 10 minutes;
categorizing the food in Food Level 5 if the food is
warmed, dried or dehydrated at a temperature
between 155°F and 200°F, steamed for a duration
between 4 minutes and 10 minutes or boiled for a duration
between 10 minutes and 45 minutes;
categorizing the food in Food Level 6 if the food is
baked and has up to 20% fat per unit serving, if the food is
warmed, dried or dehydrated at a temperature that is
greater than 200°F, steamed for more than 10 minutes or
boiled for more than 45 minutes;
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categorizing the food in Food Level 7 if the food is
an animal-based food that is a type of fish excluding
shellfish, catfish or fish with substantial levels of
contaminants that is raw, lightly steamed or poached for
less than 8 minutes or a non-animal-based food that has
been baked and has greater than 20% fat per unit serving,
has been jarred, poached, canned, or combined with one
or more natural additives;
categorizing the food in Food Level 8 if the food is
an animal-based food that is a wild game meat, a type of
fish excluding shellfish, catfish or fish with substantial
levels of contaminants that has been lightly steamed or
poached for more than 8 minutes or a non-animal-based
food that has been grilled, includes carbohydrates with
white flour/rice, or has one or more natural components
removed from the non-animal-based food;
categorizing the food in Food Level 9 if the food
includes domestically raised animals excluding beef and
pork, all other types of fish, or one or more dairy-
processed foods or includes non-animal-based foods that
have been sautéed, stir-fried, fried, or microwaved; and
categorizing the food in Food Level 10 if the food
is not categorized in any other Food Level; and
displaying the one of the plurality of food level numbers
on a display device.

REJECTION
The Examiner rejects claims 1–4, 6, 7, 9–11, 14, 15, and 17–29 under
35 U.S.C. § 101 as reciting only patent-ineligible subject matter.

PRINCIPLES OF LAW CONCERNING 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
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Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See 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.” Id. 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) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts that the courts 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,
67 (1972)). Concepts that the courts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
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In Diehr, although the claim at issue recited a mathematical formula,
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.”).
Nonetheless, 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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 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. (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.
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2019 Revised Patent Subject Matter Eligibility Guidance
The U.S. Patent and Trademark Office recently published revised
guidance on the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under that 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 i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
A practical application “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.” Guidance at 54.
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 either:
(3) adds a specific limitation beyond the judicial exception
which is not “well-understood, routine, [or] conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.

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ANALYSIS
Initially, we note that Appellant argues against the Examiner’s § 101
rejection of the claims as a group. See Appeal Br. 29–34. We choose
independent claim 1 for our analysis, and the remaining independent and
dependent claims stand or fall with claim 1. See 37 C.F.R. § 41.37
(c)(1)(iv). For the following reasons, we sustain the Examiner’s rejection of
the claims as patent-ineligible.
We determine that in accordance with point (1) of the Guidance
referenced above, independent claim 1 recites at least one judicial exception,
including an abstract idea. More specifically, as described in further detail,
the abstract idea includes mental concepts.
As reproduced above, claim 1 recites a method comprising the
following: (1) “receiving a description of a food”; (2) “determining whether
the food is non-animal-based or animal-based”; (3) “determining an extent
in which the food is processed”; (4) “determining one or more nutritional
characteristics of the food”; (5) “determining an origin of the food”; (6)
“determining one or more possible effects of the food on a human body”; (7)
“categorizing, using a microprocessor, the food to one of a plurality of food
level numbers based on whether the food is non-animal-based or animal-
based, the extent of processing, the nutritional characteristics, the origin, and
the possible effects on the human body, wherein categorizing the food
comprises”: (7a) “categorizing the food in Food Level 0 if the food is non-
animal-based and juiced, blended, or steeped in water as a tea at a
temperature less than 100°F”; “(7b) “categorizing the food in Food Level 1,
2 or 3 if the food is ripened, chopped, minced, frozen, or pureed”; (7c)
“categorizing the food in Food Level 4 if the food is warmed, dried or
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dehydrated at a temperature less than 155°F, steamed for less than 4 minutes
or boiled for less than 10 minutes”; (7d) “categorizing the food in Food
Level 5 if the food is warmed, dried or dehydrated at a temperature
between 155°F and 200°F, steamed for a duration between 4 minutes and 10
minutes or boiled for a duration between 10 minutes and 45 minutes”; (7e)
“categorizing the food in Food Level 6 if the food is baked and has up
to 20% fat per unit serving, if the food is warmed, dried or dehydrated at a
temperature that is greater than 200°F, steamed for more than 10 minutes or
boiled for more than 45 minutes” (7f) “categorizing the food in Food Level 7
if the food is an animal-based food that is a type of fish excluding shellfish,
catfish or fish with substantial levels of contaminants that is raw, lightly
steamed or poached for less than 8 minutes or a non-animal-based food that
has been baked and has greater than 20% fat per unit serving, has been
jarred, poached, canned, or combined with one or more natural additives”;
(7g) “categorizing the food in Food Level 8 if the food is an animal-based
food that is a wild game meat, a type of fish excluding shellfish, catfish or
fish with substantial levels of contaminants that has been lightly steamed or
poached for more than 8 minutes or a non-animal-based food that has been
grilled, includes carbohydrates with white flour/rice, or has one or more
natural components removed from the non-animal-based food”; (7h)
“categorizing the food in Food Level 9 if the food includes domestically
raised animals excluding beef and pork, all other types of fish, or one or
more dairy-processed foods or includes non-animal-based foods that have
been sautéed, stir-fried, fried, or microwaved,” and (7i) “categorizing the
food in Food Level 10 if the food is not categorized in any other Food
Level”; and (8) “displaying the one of the plurality of food level numbers on
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a display device.” Appeal Br., Claims App. (Claim 1). Claim
recitations (2)–(6) are determinations that a person may accomplish in his or
her mind. For example, a person may read a package label and apply his or
her understanding to determine whether a food is animal-based or not,
whether the food is processed, and whether the food provides various
nutritional characteristics such as vitamins or minerals. The person may
read from the food package label where the food was produced. The person
may use his or her knowledge, and determine what effects consuming the
food may have on his or her body. Further, aside from the express recitation
of a processor, claim recitations (7) and (7a)–(7i) otherwise may be done by
a person in his or her mind. In particular, the person may make the
determinations discussed above for a certain food, and mentally categorize
the food in one or more of Food Levels 1–10 as specifically set forth in
claim recitations (7a)–(7i). By way of a more specific example, a person
may read a package label for a juice which indicates that the juice is non-
animal based, and was juiced at a temperature of less than 100°F, and the
person may subsequently characterize, in his or her mind, the juice as Food
Level 0 for the reasons set forth in claim recitation (7a).
The courts have recognized mental steps, such as those identified
above, as abstract ideas. See Elec. Power Grp. LLC v. Alstom, 830 F.3d
1350, 1353–54 (Fed. Cir. 2016) (collecting information and “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category.”); see CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (finding a claim that is directed to “a
method that can be performed by human thought alone is merely an abstract
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idea and is not patent-eligible under § 101”); see In re Comiskey, 554 F.3d
967, 979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human
thinking—standing alone are not patentable even if they have practical
application.”); see Gottschalk v. Benson, 409 U.S. at 67 (“Phenomena of
nature, . . . mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”).
Additionally, mental processes may remain unpatentable even when
automated to reduce the burden on the user. CyberSource, 654 F.3d at 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”). Accordingly, we conclude that claim 1 recites a
judicial exception of mental processes.
In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
exception into a practical application—i.e., something that “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.” Guidance
at 54. The claim only generically recites the use of certain physical
hardware—a microprocessor and a display device—and, thus, these
components do not meaningfully limit the claim. Further, in the
Specification, Appellant does not describe the claimed hardware in such a
way as to indicate that the hardware is anything other than generic. See, e.g.,
Spec. ¶ 21 (“Implementations of various technologies described herein may
be operational with numerous general purpose or special purpose computing
system environments or configurations. Examples of well[-]known
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computing systems, environments, and/or configurations that may be
suitable for use with the various technologies described herein include, but
are not limited to, personal computers, server computers, hand-held or laptop
devices, multiprocessor systems, microprocessor-based systems, set top
boxes, programmable consumer electronics, network PCs, minicomputers,
mainframe computers, distributed computing environments that include any
of the above systems or devices, and the like.”); id. ¶ 28 (“A monitor 47 or
other type of display device may also be connected to system bus 23 via an
interface, such as a video adapter 48.”). Thus, claim 1 does not affect an
improvement in any technology or technical field.
Therefore, claim 1 is directed to the above-discussed abstract idea,
and does not integrate the judicial exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 1 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed hardware, as well as the functions performed by the claimed
hardware, are purely conventional. Specifically, claim 1 uses known,
generic components to perform their known, basic functions. Although,
arguably, the data processed and displayed differs, the claim recites the
microprocessor and display device only at a high level of generality. In
other words, here the claim recites only well-understood, routine, and
conventional functions. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639 F.3d 1303, 1316 (Fed.
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Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
For the following reasons, when considered as an ordered
combination, claim 1’s hardware does not add anything that is not already
present when we consider the steps separately. The microprocessor and
display device remain the same before, during, and after display of the Food
Category level. Thus, the claim amounts to nothing significantly more than
instructions to apply the abstract idea with generic hardware, and does not
improve the microprocessor or display device. Accordingly, the claim
recitations are insufficient to transform the abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
We have considered all of Appellant’s arguments in the Briefs, but
Appellant does not persuade us of error. We now address certain arguments
below.
We are not persuaded of error by Appellant’s argument that the claims
“do not seek to tie up the abstract concept of categorizing food such that
other cannot practice this concept.” Appeal Br. 31. “While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Rather, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
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this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
We are not persuaded by Appellant’s argument that, based on the
Affidavits of Dr. Baxter Montgomery, the claimed method “ha[s] been
‘successfully implemented in thousands of individuals with various chronic
illnesses,’” and “resulted in the improved health of patients.” Appeal
Br. 31–32; see also id. at 31–33. Successful implementation of an abstract
idea does not make the idea non-abstract.
We are not persuaded by Appellant’s argument that the claims are
similar to those at issue in Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016). Appeal Br. 33. In Amdocs, the Federal Circuit
held the claim patent-eligible because it “entail[ed] an unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases).” Amdocs, 841 F.3d at 1300. “The solution require[d]
arguably generic components, including network devices and ‘gatherers’
which ‘gather’ information.” However, the court concluded that these
generic components provided an enhancing limitation for specifying how the
data is processed before placement in a database. Id. at 1301. The court
further concluded that this “enhancing limitation necessarily require[d] that
these generic components operate in an unconventional manner to achieve
an improvement in computer functionality.” Id. at 1300–01. In the present
case, however, Appellant’s claim 1 does not address a technological
problem, and therefore does not provide a technological solution to such a
problem.
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We are not persuaded of error by Appellant’s argument that the
claims, in accordance with Berkheimer v. HP Inc., 881 F.3d 1369 (Fed. Cir.
2018), recite eligible subject matter, because the Examiner failed to
demonstrate that the claims recite methods that are well understood, routine,
and conventional, as the Examiner provides no factual support. Appeal Br.
34. It is not relevant whether the abstract idea itself is well understood,
routine, and conventional, but rather “whether the additional elements
amount to significantly more than the exception itself.” Guidance at 56.
The elements recited in claim 1, beyond the scope of the abstract idea, are
only reciting the use of a microprocessor and display device. As we discuss
above, there is no indication that this hardware is anything other than
generic, whose operation within the scope of the claim steps is merely well
understood, routine, and conventional. This is because operations such as
categorizing and displaying are basic computer operations found in many
computer systems. See In re Katz Interactive Call Processing Patent Litig.,
639 F.3d at 1316.
Therefore, based on the foregoing, we sustain the Examiner’s § 101
rejection of independent claim 1. Inasmuch as the remaining claims under
appeal stand or fall with claim 1, we also sustain the rejection of claims 2–4,
6, 7, 9–11, 14, 15, and 17–29.

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CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1–4, 6, 7, 9–11, 14,
15, and 17–29 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 6, 7, 9–11,
14, 15, 17–29
101 1–4, 6, 7, 9–11, 14,
15, 17–29

Overall
Outcome
1–4, 6, 7, 9–11, 14,
15, 17–29

AFFIRMED