Ex Parte AxelrodDownload PDFPatent Trial and Appeal BoardJan 28, 201411338213 (P.T.A.B. Jan. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/338,213 01/24/2006 Helena Axelrod 509-001 6429 40621 7590 01/29/2014 PASTEL LAW FIRM CHRISTOPHER R. PASTEL 8 PERRY LANE ITHACA, NY 14850-9267 EXAMINER THANH, LOAN H ART UNIT PAPER NUMBER 3764 MAIL DATE DELIVERY MODE 01/29/2014 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 HELENA AXELROD ____________ Appeal 2012/002562 Application 11/338,213 Technology Center 3700 ____________ Before ANTON W. FETTING, GAY ANN SPAHN, and THOMAS F. SMEGAL, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 2-5, 11-15, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). Appeal 2012-002562 Application 11/338,213 2 Claimed Subject Matter The claimed subject matter “relates generally to the field of exercise equipment, and more particularly to a yoga belt with loops for hand and foot.” Spec. 1, para. [01]. Claim 2, reproduced below, is illustrative of the appealed subject matter. 2. A one-piece yoga belt, consisting of a first straight portion, a second straight portion, and a third straight portion, with a first loop positioned between the first straight portion and the second straight portion and a second loop positioned between the second straight portion and the third straight portion, and a D- ring on an end of the first straight portion; wherein the first loop and second loop are sized to receive a foot of a user; and wherein the yoga belt is made of woven cotton canvas approximately 1.5 inches wide. Rejections The following Examiner’s rejections are before us for review: I. claims 12-15 and 17-20 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter; and II. claims 2-5 and 11 under 35 U.S.C. § 103(a) as unpatentable over Crush (US 4,220,328, issued Sep. 2, 1980)1. OPINION Rejection I – Non-statutory Subject Matter The Examiner determines that “[t]he are claims directed to ‘a method for a user to use a one-piece yoga belt’” are “not statutory under 35 U.S.C. 1 The Examiner modifies Crush by “the use of such a material [i.e., woven cotton canvas, which is] well known in the art, as evidenced by DiOrio (US 7,223,212 B2[, issued May 29, 2007]).” Ans. 6. Appeal 2012-002562 Application 11/338,213 3 § 101,” because (1) they fail the machine-or-transformation test and (2) they “outline a set of instructions for using a belt to facilitate a yoga exercise and as such are interpreted as abstract ideas.” Ans. 4-5. Appellant notes that Bilski v. Kappos, 130 S. Ct. 3218 (2010) “sets forth the way to determine if a method claim meets the requirements of Section 101,” and “Bilski first looks to the machine or transformation test, and if a claimed invention does not pass that test, various judicial exceptions are looked at.” Reply Br. 2. Appellant then argues that “the various exceptions were not analyzed properly, and that the [E]xaminer stated the conclusion (abstract idea) without any factual foundation,” because first, “there is a transformation in the method claims--the body is moved from one position to another with the aid of the carefully recited yoga belt” and second, “[t]he method claims do not recite an abstract idea” since “[t]here is nothing abstract about physical movement.” Id. We are not persuaded by Appellant’s arguments. In the Response to Argument section of the Answer, the Examiner acknowledges that the machine-or-transformation test is not the sole test in the determination of non-statutory subject matter, but it is an indicator that Appellant is attempting to patent an abstract idea. Ans. 10-11. The Examiner explains that the claims recite the use of the claimed yoga belt, but the yoga belt does not actually perform any of the method steps; rather, a user performs the steps using the yoga belt. Ans. 11. The Examiner also explains that “a set of instructions directed to a manner of exercising and reciting steps for how a user’s body is oriented or position[ed] qualifies as an abstract idea.” Id. Appeal 2012-002562 Application 11/338,213 4 First, we disagree with Appellant’s argument that there is a transformation occurring in the steps of the method claims. Reply Br. 2. The Manual of Patent Examining Procedure (MPEP) § 2016(I) references Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” (emphasis added) (quoting Cochrane v. Deener, 94 U.S. 780, 788 (1876))), and then explains what is required to find a transformation or a transformative process, as follows: “Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. [Articles of m]anufacture[] and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. See MPEP § 2106(II)(B)(1)(b). Appellant’s argument that the human using the belt is “transformed” as a result of performing the claimed process is not persuasive. Both the person and the belt are merely moved into a different location or position, but neither the belt nor the person is transformed. Second, the Examiner properly presented a prima facie case when the Examiner considered a number of factors in reaching the conclusion that the claimed methods are non-statutory. Indeed, the Examiner discusses the following important factors in the analysis as to whether the claimed method is non-statutory: (1) no transformation (i.e., the “method claims are not Appeal 2012-002562 Application 11/338,213 5 implemented by the device, but rather are only functionally tied to the device”); (2) the yoga belt is merely an object on which the method operates (i.e., while there is a machine, the yoga belt, involved in the steps, there is an insufficient recitation of the yoga belt and its structure because as claimed the machine is not performing any steps, it is merely an article upon which a human performs the claimed steps and thus, the presence of the yoga belt does not make the claimed method patent eligible); and (3) the steps outline “[a] set of instructions for using a belt to facilitate a yoga exercise” or particular yoga pose so that the claimed method is a statement of a general concept of human behavior (i.e., MPEP section 2106(II)(B)(1)(d) factor (f) unequivocally lists exercising as an example of human behavior that is not patent eligible, but rather is an abstract idea). Accordingly, we sustain the Examiner’s rejection under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Rejection II – Obviousness based on Crush The Examiner finds that Crush discloses claim 2’s recitation of : A one-piece yoga belt, consisting of a first straight portion, a second straight portion, and a third straight portion, with a first loop positioned between the first straight portion and the second straight portion and a second loop positioned between the second straight portion and the third straight portion, and a D- ring on an end of the first straight portion. See App. Br., Clms. App’x.; see also Ans. 6 (citing Crush, col. 3, ll. 59-61 and Fig. 1). More particularly, the Examiner annotates Crush’s Figure 1 to show how Crush is being interpreted to read on claim 2. See Ans. 9. App App F first weig more and b trans not s 520 (“con other there detac eal 2012-0 lication 11 igure 2 of Cru In additi straight po Appellan ht to the tr than one etween th itional phr pecified in (CCPA 19 sisting of than thos with.”)). The Exa hable and 02562 /338,213 Crush as sh’s Figur on, the Ex rtion to co t argues th ansition w loop posit e second a ase consis the claim 31) and Ex ” defined a e recited e miner resp that the d annotated e 2 depicts aminer int nstitute th at “the [E ords ‘con ioned betw nd third s ting of “ex .” See MP parte Da s “closing xcept for i onds that evice can c 6 by the Exa a pulling erprets the e claimed ]xaminer sisting of,’ een the fir traight por cludes an EP § 211 vis, 80 US the claim mpurities “Crush tea onsist of a miner is r line sport D-ring 16 D-ring. A appears no ” because st and sec tions.” Ap y element, 1.03 (citing PQ 448, 4 to the inc ordinarily ches the lo s few loo eproduced apparatus. ʹ on the en ns. 6. t to be giv “Crush . . ond straig p. Br. 4. step, or in In re Gra 50 (BPAI lusion of m associated ops being ps as desir below: d of the ing proper . discloses ht portions The gredient y, 53 F.2d 1948) aterials ed , Appeal 2012-002562 Application 11/338,213 7 including just two . . . thereby meeting the claim limitations of just a first loop and [a] second loop.” Ans. 10 (citing Crush, col. 5, ll. 18-22, which indicates that “[t]he removability of handle bodies 14 and 14ʹ permits easy storage, repair and/or replacement thereof” and “[f]urthermore, this feature allows unnecessary handle bodies to be removed when the apparatus is being used by less than the maximum number of players”). Although the Examiner correctly noted that Crush may suggest removing loops for accommodating a lesser number of players, we are persuaded by Appellant’s arguments that the Examiner failed to give proper weight to the transitional phrase “consisting of,” because the Examiner did not modify the Figure 1 embodiment of Crush relied upon in the rejection to have only first and second loops by removing eight of the ten loops shown and giving a reason with a rational underpinning for doing so. Accordingly, we do not sustain the Examiner’s rejection of independent claim 2, and claims 3-5 and 11 which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Crush. NEW GROUND OF REJECTION We enter a new ground of rejection, pursuant to our authority under 37 C.F.R. § 4150(b), as follows: Claims 2-5, 11-15, and 17-20 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement because the claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention. Appeal 2012-002562 Application 11/338,213 8 Independent claims 2, 12, and 18 (and their dependent claims 3-5, 11, 13-15, 17, 19, and 20) all recite, in various language, that a one-piece yoga belt consists of first, second, and third straight portions, a first loop positioned between the first straight portion and the second straight portion, a second loop positioned between the second straight portion and the third straight portion, and a D-ring on an end of the first straight portion. See App. Br., Clms. App’x. The originally filed disclosure does not support a one-piece yoga belt consisting of a D-ring. Indeed, originally filed dependent claim 2 recited the yoga belt of claim 1 “wherein the yoga belt consists of the first portion, the second portion, and the third portion, with the first loop positioned between the first portion and the second portion and the second loop positioned between the second portion and the third portion.” Thus, the addition of the D-ring in the amendment filed on Apr. 9, 2010 and entered by the Request for Continued Examination (RCE) of Oct. 28, 2010 constituted new matter for two reasons. First, the originally filed disclosure only supported that the yoga belt consisted of first, second, and third portions and first and second loops, not the three portions, two loops, and a D-ring. Second, the yoga belt cannot be one-piece if it includes the D-ring because the D-ring constitutes a second piece. DECISION We AFFIRM the Examiner’s rejection of claims 12-15 and 17-20 under 35 U.S.C. § 101 for being directed to non-statutory subject matter. We REVERSE the Examiner’s rejection of claims 2-5 and 11 under 35 U.S.C. § 103(a) as unpatentable over Crush. Appeal 2012-002562 Application 11/338,213 9 We ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b) against claims 2-5, 11- 15, and 17-20 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. FINALITY OF DECISION Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months of the date of the original decision of the Board.” In addition to affirming the Examiner's rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner Appeal 2012-002562 Application 11/338,213 10 pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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-IN-PART; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation