Ex Parte Bartels

Patent Trial and Appeal Board

Feb 15, 2018

12273890 (P.T.A.B. Feb. 15, 2018)

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.
12/273,890 11/19/2008 John Brian Bartels JBBl 9222
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, EL 32820-2712
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
apexmasterworks @ gmail. com
sfnlhafnap @ yahoo, com
dvisnius @ bellsouth. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN BRIAN BARTELS
Appeal 2016-004105
Application 12/273,890
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—10 and 17—20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-004105
Application 12/273,890
THE INVENTION
The Appellant’s claimed invention is directed to a selling system that
includes a data processing device and a human consumable product
(Spec. para. 8). Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. An interactive selling system comprising:
a data processing device;
a human consumable product;
a concealed flavor associated with said
human consumable product; and
a code carried by said human consumable product that by itself
cannot reveal said concealed flavor to a consumer;
said code and said data processing device induce the consumer
to purchase said human consumable product because the consumer
can relay said code to said data processing device which then
determines for the consumer said concealed flavor based upon said
code.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—10 and 17—20 are rejected under 35 U.S.C. § 101 as
being drawn to patent-ineligible subject matter.
2. Claims 1, 2, 5—7, 9, and 10 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Daines (GB 2 325 550 A, pub. Nov. 25, 1998)
and Barnes (US 8,033,460 B2, iss. Oct. 11, 2011).
3. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Daines, Barnes, and Gabos (US 2001/0032130 Al, pub.
Oct. 18,2001).
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4. Claims 8, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Daines, Barnes, and Walker (US 2006/0122881 Al, pub.
June 8, 2006).
5. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Daines, Barnes, Walker, and Gabos.
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.1
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellant argues that the rejection of the claims under 35 U.S.C.
§101 procedurally should not have been made because the prior rejection
was reversed in the previous Decision of June 26, 2014 (App. Br. 5).
The discretion of the Examiner to make a new grounds of rejection
after a reversal of a rejection is a petitionable but not appealable matter.2
The Decision on Petition mailed by the TC Director has determined that the
petition in this manner has been denied.3 As noted in that Decision on
Petition, the previous Decision addressed the rejection that the Examiner
made on the basis of outdated standards from In re Bilski, 88 USPQ2d 1385
(Fed. Cir. 2008) and a new rationale based on current guidance has been set
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
2 See MPEP §§ 1002.02(c), 1201; 37 C.F.R. 1.198.
3 See Decision on Petition mailed March 12, 2015.
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Application 12/273,890
forth (Decision on Petition, page 4). As this is a petitionable and not
appealable matter and as that petition has been denied, the current newly
applied rejection under 35 U.S.C. § 101 is properly of record in the case.
The Appellant also argues that the previous Decision stated that the
claim was directed to a tangible system and not a “mere abstract idea” (App.
Br. 7).
In contrast, the Examiner has determined that the new rejection and
rationale made under 35 U.S.C. § 101 is proper (Ans. 2—6, 15—20). The
Examiner applies the new rationale under 35 U.S.C. § 101 taking into
account Alice Corp. Propriety Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), which was not done in the prior rejection of record.
We agree with the Examiner. Although the Appellant in the Appeal
Brief at pages 4—7 has not substantively argued the merits of the new
pending rejection under 35 U.S.C. § 101, we nevertheless have reviewed the
rejection and now deem it properly made in light of the new rationale
provided in the Answer at pages 2—6 and 15—20. In view of this new
rejection and consideration of it, we agree with and adopt the Examiner’s
reasoning under 35 U.S.C. § 101. Although our previous Decision did state
the claim included tangible elements, the Examiner’s new rejection under 35
U.S.C. § 101 has persuaded us that the rejection is proper in light of Alice
Corp. Pty Ltd.
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: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. at 2354.
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Application 12/273,890
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id at 2358.
Here, we find that the claim is directed to the concept of selling and
marketing human consumable products. Selling and marketing human
consumable products is a fundamental economic practice long prevalent in
our system of commerce and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
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Application 12/273,890
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. The Specification
at paragraphs 24 and 25, for instance, discloses that conventional computer
components are used in a conventional manner in the system.
In Alice it was determined that “the system claims are no different in
substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea.”
Alice 134 S. Ct. at 2351. “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea ‘while adding the words “apply if” is not
enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294). Here, the claims are used in a system but fail to transform the
abstract idea into a patent-eligible invention.
For these reasons the rejection of claim 1 is sustained. The remaining
claims are directed to similar subject matter and we sustain the rejection of
these claims as well.
Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) is improper because the cited prior art fails to disclose the claim
limitation for a “concealed flavor associated with said human consumable
product” (App. Br. 9).
In contrast, the Examiner has determined that the cited claim
limitation is found in Daines at the Abstract and page 2 (Ans. 21).
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We agree with the Appellant. Here, Daines at page 2 does disclose a
product identification system with a programmable bar code scanner having
memory and comparison means to compare allergen information and
generate a signal if the product is suitable for the user (Daines 2). However,
the reference also states at page 1 that the products include a list of
ingredients which is read through but can be a “long, drawn out business.”
It is unclear beyond speculation into probabilities and possibilities if the
product contains both of the list of ingredients and the bar code, or only the
bar code, or some combination of both. The Abstract fails to specifically
disclose the argued claim limitation as well. Thus, the cited reference
Daines at the Abstract and pages 1 and 2 fails to specifically disclose a
“concealed flavor associated with said human consumable product” and the
rejections of claim 1 and its dependent claims are not sustained. The
remaining claims contain a similar limitation and the rejections of these
claims are not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims listed above under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims listed above under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1—10 and 17—20 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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